MOLD MEDICS LLC v. HOMECLEANSE SERVICES, LLC

 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA MOLD MEDICS LLC, Plaintiff, Civil Action No. 2:21-cv-1851 Vv. Hon. William S. Stickman IV ALL AMERICAN RESTORATION CORP. and MICHAEL RUBINO, Defendants. MEMORANDUM OPINION WILLIAM S. STICKMAN IV, District Judge Plaintiff Mold Medics LLC (“Mold Medics”) commenced this trademark infringement lawsuit against Defendants All American Restoration Corp. (“AARC”) and Michael Rubino (“Rubino”) (collectively, “Defendants”) on December 22, 2021. (ECF No. 1). Count I of Mold Medics’ Complaint is a claim for “Federal Trademark Infringement Under § 32(1) of the Lanham Act (15 U.S.C. § 1141(1)),” Count I is a claim for “Unfair Competition Under § 43(a) of the Lanham Act (15 U.S.C. § 1125(a)),” and, Count III is a claim for “Common Law Trademark Infringement and Unfair Competition.” (ECF No. 1, pp. 4-6). Defendants filed a Motion to Dismiss or Transfer. (ECF No. 14). First, they seek dismissal pursuant to Federal Rule of Civil Procedure 12(b)(2) (“Rule 12(b)(2)”) arguing that the Court lacks personal jurisdiction over them. (ECF No. 15). In the alternative, they request a transfer of venue to the United States District Court for the District of New Jersey pursuant to Federal Rule of Civil Procedure 12(b)(3) (‘Rule 12(b)()’). Uad.). Second, they contend Mold Medics has failed to adequately plead a claim upon which relief may be granted and dismissal is appropriate pursuant to Federal Rule of Civil Procedure 12(b)(6) (“Rule 12(b)(6)”). (d.). Upon request of the parties, the Court granted jurisdictional discovery, which commenced on February 15, 2022. (ECF Nos. 17, 18 and 20). On June 23, 2022, the parties notified the Court that jurisdictional discovery had concluded. (ECF No. 30). Briefing on Defendants’ motion is now complete.! For the following reasons, the Court will deny Defendants’ motion in its entirety. I. STANDARD OF REVIEW A. Rule 12(b)(2) Rule 12(b)(2) requires a court to dismiss a case when it lacks personal jurisdiction over a defendant. Feb. R. Crv. P. 12(b)(2). A court must analyze jurisdictional contacts on a claim-by- claim basis. Miller Yacht Sales, Inc. v. Smith, 384 F.3d 93, 104 (3d Cir. 2004). A defendant bears the initial burden of raising personal jurisdiction as a defense. See FED. R. Civ. P. 12(h)(1). When a defendant raises that defense, the burden shifts to a plaintiff to establish personal jurisdiction. O’Connor v. Sandy Lane Hotel Co., Ltd., 496 F.3d 312, 316 (3d Cir. 2007). If there is no evidentiary hearing, a plaintiff must make a prima facie case by furnishing facts that establish with reasonable particularity that personal jurisdiction exists. Provident Nat’l Bank v. Cal. Fed. Sav. & Loan Ass’n, 819 F.2d 434, 437 (3d Cir. 1987) (citing Gehling v. St. George’s Sch. of Med., Ltd., 773 F.2d 539, 542 (3d Cir. 1985)). Ifa court holds an evidentiary hearing, the standard of proof elevates to a preponderance of the evidence standard. LaRose v. Sponco Mfg., Inc., 712 F. Supp. 455 (D.N.J. 1989); see also Hufnagel v. Ciamacco, 281 F.R.D. 238, 244 (W.D. Pa. 2012) (citing cases). If a plaintiff meets his burden, then the burden shifts back to a defendant to present a compelling case that personal jurisdiction is unreasonable. Carteret Sav. 1 Seven days after the completion of briefing, on July 21, 2021, Michael Rubino filed his first Amended Counter-Claim against Mold Medics, LLC and Third-Party Complaint against Tim Swackhammer (“Swackhammer’”). (ECF No. 41). This prompted a Motion to Dismiss from Mold Medics and Swackhammer. (ECF No. 43). Briefing is set to conclude on September 9, 2022. (ECF No. 46). Bank, FA vy. Shushan, 954 F.2d 141, 142 & n.1 (3d Cir. 1992) (citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477 (1985)). . A plaintiff's case cannot merely rely on the pleadings but must be supported by sworn affidavits or other competent evidence. Time Share Vacation Club v. Atl. Resorts, Ltd., 735 F.2d 61, 66 & n.9 (3d Cir. 1984). All allegations made by a plaintiff are accepted as true and all disputed facts are construed in a plaintiff's favor. Carteret, 954 F.2d at 142 & n.1. To that end, any conflicts between the evidence submitted by a plaintiff and a defendant are construed in a plaintiff's favor. In re Enter. Rent-A-Car Wage & Hour Empl.’t Practices Litig., 735 F. Supp. 2d 277, 307 (W.D. Pa. 2010). If a plaintiff initially fails to meet his burden but makes factual allegations suggesting that the requisite contacts exist, a court can order jurisdictional discovery to ameliorate the jurisdictional inquiry. Toys “R” Us, Inc. v. Step Two, S.A., 318 F.3d 446, 456 (3d Cir. 2003). B. Rule 12(b)() Fep. R. Civ. P. 12(b)(3) is the proper vehicle for seeking a dismissal only when venue in the chosen forum is improper under the federal statutes, see Atlantic Marine Const. Co. v. U.S. Dist. Court for Western Dist. of Texas, 571 U.S. 49, 55 (2013), although the Court retains the discretion to transfer, rather than dismiss, were it to find venue improper.*? A defendant seeking dismissal under Rule 12(b)(3) bears the burden of showing that venue is improper. See Great W. Mining & Mineral Co. v. ADR Options, Inc., 434 F. App’x 83, 86 (3d Cir. 2011). See also Myers y. American Dental Ass’n, 695 F.2d 716, 725 (3d Cir. 1982). In deciding a motion to dismiss ? If venue is inappropriate, a court may either dismiss the action or transfer it to the court which has appropriate venue. 28 U.S.C. § 1404; 28 U.S.C. § 1406. Section 1406 “applies where the original venue is improper and provides for either transfer or dismissal of the case.” Jumara vy. State Farm Ins. Co., 55 F.3d 873, 878 (3d Cir. 1995). Section 1404(a) provides for transferring a case in which both the original and the requested venue are proper. Jd. and/or transfer for improper venue under Rule 12(b)(3), the Court must generally accept as true the allegations in the pleadings. In “ruling on defendant’s motion the plaintiff's choice of venue should not be lightly disturbed.” Jumara, 55 F.3d at 879. C. Rule 12(b)(6) A motion to dismiss filed under FED. R. Civ. P. 12(b)(6) tests the legal sufficiency of the complaint. Kost v. Kozakiewicz, 1 F.3d 176, 183 (3d Cir. 1993). A plaintiff must allege sufficient facts that, if accepted as true, state a claim for relief plausible on its face. See Bell Ail. Corp. v. Twombly, 550 U.S. 544, 555 (2007); see also Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). A court must accept all well-pleaded factual allegations as true and view them in the light most favorable to a plaintiff. See Doe v. Princeton Univ., 30 F.4th 335, 340 Gd Cir. 2022); see also Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). Although a court must accept the allegations in the complaint as true, it is “not compelled to accept unsupported conclusions and unwarranted inferences, or a legal conclusion couched as a factual allegation.” Baraka v. McGreevey, 481 F.3d 187, 195 (3d Cir. 2007) (citations omitted). The “plausibility” standard required for a complaint to survive a motion to dismiss is not akin to a “probability” requirement but asks for more than sheer “possibility.” Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 556). In other words, the complaint’s factual allegations must be enough to raise a right to relief above the speculative level, on the assumption that all the □ allegations are true even if doubtful in fact. Twombly, 550 U.S. at 555. Facial plausibility 1s present when a plaintiff pleads factual content that allows the court to draw the reasonable inference that a defendant is liable for the misconduct alleged. Iqbal, 556 U.S. at 678. Even if the complaint’s well-pleaded facts lead to a plausible inference, that inference alone will not entitle a plaintiff to relief. Id. at 682. The complaint must support the inference with facts to plausibly justify that inferential leap. Jd. II. FACTUAL BACKGROUND? Mold Medics LLC is a Pennsylvania corporation, with its principal place of business at 811 Washington Ave., Carnegie, PA 15106. (ECF No. 1, p. 1). It was organized in January of 2018. (ECF No. 5-1, p. 5). Mold Medics owns the mark “MOLD MEDICS” (“Mark”) and registered the Mark on the principal trademark register of the United States Patent and Trademark Office (“USPTO”) at USPTO Registration No. 5,886,631 on October 15, 2019. (ECF No. 1, p. 2). It uses the Mark in the operation of its business providing services, products, and solutions for mold remediation and other air quality and environmental issues. (Jd. at p. 2). The Mark is also used under a license agreement with its affiliate for marketing, sale, management and operation of the franchise system for its businesses. Mold Medics uses the domain name www.moldmedics.com. (Id.). . In September of 2021, Mold Medics became aware that Defendants had begun to use the marks “The Mold Medic” and “Mold Medic” and the domain name www.themoldmedic.com (“Infringing Marks”) in connection with the operation of a mold remediation and air and environmental quality business. Defendants are alleged to have established social media and marketing sites using Infringing Marks as well as publishing an infringing book titled, “The Mold Medic.” (d.). Mold Medics contends that Defendants’ activities have caused customer confusion and disrupted Mold Medics’ business. 3 The Court’s rendition of the facts is informed not only by Mold Medics’ allegations in its Complaint, but the facts ascertained during jurisdictional discovery and submitted to the Court for review at ECF Nos. 36, 38, 39, 40-1, 40-2, 40-3, 40-4, 47-1, as well as ECF Nos. 15-1 and 15-2 and ECF No. 5-1. AARC is a New Jersey corporation with its registered office and principal place of business at 1711 Ginesi Drive, Suite 3, Freehold, Monmouth County, NJ 07728. (ECF No. 1, p. 1). In addition, AARC has offices in Florida and California. (ECF No. 15-1). AARC does not maintain offices, employ workers, or own any property or assets in Pennsylvania. (/d.). It was incorporated in May 2017, advertising as “Certified Mold Remediators” and offering mold remediation, flood and fire damage, cleanup, basement waterproofing and yard drainage. Since January 2019, AARC has advertised that it is licensed in Connecticut, New Jersey, New York, and Pennsylvania. It maintains a home improvement contractor’s license in Pennsylvania. In April of 2020, AARC advertised on its website that its services were available in Pennsylvania, and it provided a link for customers to “Book Now.” (ECF No. 40-2, p. 15); (ECF No. 36). Rubino, who is the President of AARC, is originally from New Jersey, but he has been domiciled in Florida since 2020. He does not have any personal assets, business assets, property, or agents in Pennsylvania. To the best of his knowledge, he has never even traveled within the Western District of Pennsylvania. He personally wrote and self-published a book in December 2020 titled The Mold Medic: An Expert’s Guide on Mold Removal. He used the term “Mold Medic,” online and in social media in connection with the promotion of his book because people had been referring to him that way since 2014. According to Rubino, his online and social media presence under the name “Mold Medic,” and his book are not for the promotion or offering of mold remediation or air duct cleaning services. He claims his online and social media presence simply make information available about him and the work he does. To his knowledge, he has never directed any posts or Internet activities towards the Western District of Pennsylvania. (ECF No. 15-1). Rubino’s book directed readers to contact him as follows, “If you ever have any question about mold, feel free to email me at Michael@AllAmericanRestoration.com or visit our website at www.AllAmericanRestoration.com,” and ten of thirteen testimonials in the book refer to AARC. (ECF No. 32, p. 5). AARC began advertising Rubino’s book on its website prior to its publication. It displayed a picture of the book as well as a link to pre-order the book. (ECF Nos. 36-7 and 36- 8). After publication of the book, AARC began to advertise on its website as follows: We aren’t just another remediation company, we wrote the book on it: The Mold Medic written by All American Restoration’s President Michael Rubino, outlines the steps when you first begin to experience the adverse health reactions that can accompany mold exposure. Get expert advice on finding a good inspector, remediation company and doctor to help you on your journey to recovery. (ECF Nos. 36-9 and 36-10). Meanwhile, Rubino, in January of 2021, created a website, www.themoldmedic.com; a Facebook page, @themoldmedic; an Instagram handle, themoldmedic; and, a Twitter handle, @themoldmedic. (ECF No. 5-1, pp. 10, 20-25); (ECF No. 36-12); (ECF No. 40-4, p. 10). On Rubino’s website, it referred to him as, “The Mold Medic,” and stated he was an authority on mold remediation and the President of AARC. His qualifications were cited, and readers were directed to AllAmericanResoration.com or Michael@allamericanrestoration.com to reach him. In February 2021, AARC was still advertising Rubino’s book on its website and announced it was available at Barnes & Noble. (ECF No. 36-11). On May 7, 2021, AARC filed an application to register the mark, “The Mold Medic,” on the principal register of the United States Patent and Trademark Office seeking to register it in Class 40, mold remediation services. (ECF No. 5-1, p. 2). Then, in mid-August, on AARC’s website, it launched a segment, “Mold Talks with The Mold Medic: Michael Rubino.” (ECF Nos. 36-13 and 36-14). Two months later, the same segment appeared on Rubino’s website, www.themoldmedic.com. (ECF No. 36- 15). Now, the content on the two webpages is the same. (ECF No. 32, p. 7); (ECF Nos. 36-15 and 36-16). Rubino claims he has never performed services (mold remediation or air duct) for any clients in Pennsylvania. (ECF No. 40-1, pp. 5, 8-10); (ECF No. 40-3, p. 17). Since July 2018, a total of 364 people have filled out a form on themoldmedic.com website (Rubino’s website) to inquire about a consultation, which costs $249. A person with a Pennsylvania area code associated with her phone number received a consultation, but she and her property are actually located in Las Vegas, Nevada. (ECF No. 40-3, p. 19); (ECF No. 40-4, p. 8). When a person contacts AARC, consultations are provided over the phone or other remote means. It is only when a person schedules a consultation that they provide address information. If a person requests information, AARC will send a proposal. (ECF No. 40-2, p. 6); (ECF No. 40-3, p. 8). Thus, unless a person specifies so, AARC does not know where a person is located. (ECF No. 40-3, p. 9). AARC has contacted and communicated with at least 58 prospects in Pennsylvania since November 19, 2020. (ECF Nos. 36-19, 36-22, 47-1). Mold Medics contends at least eight “prospects and customers” “came directly by use of the Mold Medic mark and brand since June 2021, at least three of which were also prospects of Mold Medics.” (ECF No. 32, p. 14). AARC has received $293,674.18 from services it performed in Pennsylvania since July 18, 2018. (ECF No. 40-2, pp. 9-10). AARC has never partnered with any consultants in Pennsylvania, and out of the 2,600 leads per year it receives nationwide, it claims that less than 1% are from Pennsylvania. (ECF No. 40-2, p. 13). TI. ANALYSIS A. The Rule 12(b)(2) motion will be denied. Under FED. R. Civ. P. 4(e), the law of the forum in which a federal district court sits controls the analysis of personal jurisdiction under its long-arm statute. The Court sits in Pennsylvania, therefore, Pennsylvania law controls. The boundaries imposed by Pennsylvania’s long-arm statute on personal jurisdiction are coextensive with those imposed by the Fourteenth Amendment. 42 Pa.C.S.A. § 5322; Vetrotex Certainteed Corp. v. Consol. Fiber Glass Prods. Co., 75 F.3d 147, 150 Gd Cir. 1996); Kenneth H. Oaks, Ltd. v. Josephson, 568 A.2d 215 (Pa. Super. 1989) (citation omitted). A federal court sitting in diversity in Pennsylvania must therefore look to federal jurisprudence to determine whether a defendant is subject to personal jurisdiction. Vetrotex, 75 F.3d at 150. The Due Process Clause of the Fourteenth Amendment to the United States Constitution only authorizes a court to exercise personal jurisdiction if a defendant purposefully established minimum contacts that have a substantial connection with the forum. U.S. CONST. amend XIV; Burger King Corp., 471 U.S. at 475 (citing cases); Int’l Shoe Co. v. State of Wash. Off of Unemp’t Comp. & Placement, 326 U.S. 310, 319 (1945). Courts apply this rule of law using a two-prong test: 1) whether a defendant has sufficient contacts with the forum (the contacts prong); and 2) whether the exercise of jurisdiction would be reasonable under the circumstances (the reasonableness prong). Daimler, 571 U.S. at 144. The minimum contacts requirement may be met through either of two theories of personal jurisdiction: general or specific. General 4 “Federal courts ordinarily follow state law in determining the bounds of their jurisdiction over persons.” Walden y. Fiore, 571 U.S. 277, 283 (2014) (quoting Daimler AG v. Bauman, 571 U.S. 117, 125 (2014)) (internal quotation marks omitted). “This is because a federal district court’s authority to assert personal jurisdiction in most cases is linked to service of process on a defendant ‘who is subject to the jurisdiction of a court of general jurisdiction in the state where the district court is located.’” Jd. (quoting FED. R. Civ. P. 4(K)(1)(A)). jurisdiction arises from a defendant’s non-forum related activities, while specific jurisdiction arises from a defendant’s forum-related activities. Helicopteros Nacionales de Colombia, 466 U.S. 408, 414 & nn.8—9 (1984); Vetrotex 75 F.3d 147 at 151 (citation omitted). General jurisdiction extends to all claims against a defendant and exists where a company is “essentially at home.” Ford Motor Co. v. Montana Eighth Judicial District Court, US. □□ 141 S. Ct. 1017, 1024 (2021). Mold Medics does not argue that general jurisdiction over Defendants is present in this case. Rather, it contends that the Court has specific personal jurisdiction over both Defendants. (ECF No. 32). Because Mold Medics has conceded that general jurisdiction is not present, the only question before the Court is whether it can exercise specific personal jurisdiction over Defendants. The Court holds that it can. Specific personal jurisdiction was founded on “an idea of reciprocity” between a defendant and the forum. Ford Motor Co., 141 S. Ct. at 1025. Put similarly, “[w]hen (but only when) a company ‘exercises the privilege of conducting activities within a state’-—thus ‘enjoying the benefits and protections of its laws’—the State may hold the company to account for related misconduct.” Jd. (quoting Int’! Shoe Co., 326 U.S. at 319). A defendant should be provided with “fair warning,” which means “knowledge that ‘a particular activity may subject it to the jurisdiction of a foreign sovereign.’” Jd. (quoting Burger King Corp., 471 U.S. at 472). “The law of specific jurisdiction . . . seeks to ensure that States with ‘little legitimate interest’ in a suit do not encroach on States more affected by the controversy.” Jd. (citing Bristol-Myers Squibb Co. v. Superior Court of California, 137 8. Ct. 1773, 1780 (2017)). The United States Court of Appeals for the Third Circuit has set forth the following test for specific jurisdiction: (1) the defendant must have purposefully directed its activities at the forum; (2) the litigation must arise out of or relate to at least one of those activities; and, (3) the exercise of jurisdiction comports 10 with fair play and substantial justice. O’Connor, 496 F.3d at 317 (citations omitted). The Court finds that Mold Medics has made a prima facie case by furnishing facts that establish with reasonable particularity that specific personal jurisdiction exists over Defendants. 1. Purposeful Availment Turning to the first requirement of specific personal jurisdiction, the Court must be satisfied that Defendants purposefully directed their conduct or activities to Pennsylvania. Mold Medics has provided several examples to show that Defendants purposefully availed themselves of the protections afforded by Pennsylvania’s laws. Those circumstances include: (1) AARC maintains a home improvement contractor’s license in Pennsylvania and advertises that it is “Ticensed in Connecticut, New Jersey, New York, & Pennsylvania” (ECF No. 32, p. 7); (2) “AARC regularly enters into contracts with Pennsylvania residents for provision of services to those residents throughout Pennsylvania”, and since November 2020, “AARC received $293,674.18 from these services”; (3) “Defendants admit to contacting and communicating with at least 58 prospects in Pennsylvania since November 19, 2020,” and “[aJt least 15 of these prospects relate to homes within the Western District of Pennsylvania,” and (4) “on at least one occasion, Defendants shipped products ordered from the Infringing Domain into Pennsylvania.” (ECF No. 32, pp. 7-8). As a threshold matter, a district court cannot exercise personal jurisdiction over a defendant that has not “purposefully avail[ed] itself of the privilege of conducting activities within the forum State.” Ford Motor Co., 141 S. Ct. at 1024 (quoting Hanson v. Denckla, 357 U.S. 235, 253 (1958)). -A defendant’s contacts with the proposed forum “must be [its] own choice and not ‘random, isolated, or fortuitous.’” Jd. at 1025 (quoting Keeton v. Hustler Magazine, Inc., 465 U.S. 770, 774 (2014)). In this vein, a defendant must have “deliberately 11 ‘reach[ed] out beyond’ its home-—by, for example, ‘exploiting a market’ in the forum State or entering a contractual relationship centered there.” Jd. (quoting Walden, 571 U.S. at 285). At the outset, it is of no consequence that Defendants have no offices, property, or bank accounts in Pennsylvania, and it does not matter that Defendants did not physically visit Pennsylvania. This is so because, “[w]hen a defendant has received the benefits and protections of the forum’s laws by engaging in business activities with a forum resident, the courts have ‘consistently rejected the notion that an absence of physical contacts can defeat personal jurisdiction there.” Remick v. Manfredy, 238 F.3d 248, 257 (3d Cir. 2001) (quoting Mellon Bank (East) PSFS, Nat. Ass’n v. Farino, 960 F.2d 1217, 1225 (3d Cir. 1992)). See also Farino, 960 F.2d at 1225 (quoting Burger King, 471 U.S. at 476) (“Defendants go on to list all the physical contacts that they do not have with Pennsylvania, e.g., no residence, no office, no bank accounts, no telephone listing, no property in the Commonwealth. While it may be true that the defendants have no physical connection with the forum, that is not dispositive. When a defendant has received the benefits and protections of the forum's laws by engaging in business activities with a forum resident, the courts have ‘consistently rejected the notion that an absence of physical contacts can defeat personal jurisdiction there.’”). ““TW hat is necessary is a deliberate targeting of the forum,’ ... so efforts ‘to exploit a national market’ that ‘necessarily included Pennsylvania’ are insufficient.” Shuker v. Smith & Nephew, PLC, 885 F.3d 760, 780 (3d Cir. 2018) (quoting O’Connor, 496 F.3d at 317 and D’Jamoos ex rel. Estate of Weingeroff v. Pilatus Aircraft Ltd., 566 F.3d 94, 104 (3d Cir. 2009). “ The factors are: (1) the degree of similarity between the owner’s mark and the alleged infringing mark; (2) the strength of the owner’s mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, competing or not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties’ sales efforts are the same; (9) the relationship of the goods in the minds of consumers, whether because of the near-identity of the products, the similarity of function, or other factors; and (10) other facts suggesting that the consuming public might expect the prior owner to manufacture both products, or expect the prior owner to manufacture a product in the defendant’s market, or expect that the prior owner is likely to expand into the defendant’s market. Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 709 (3d Cir. 2004) (quoting A&H Sportswear, 237 F.3d at 215). 6 Jnterpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir.1983). 26 and balanced one against the other.” Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 280 (3d Cir. 2001). Neither of the parties urge the Court to undertake a rigorous analysis of the Lapp factors to determine whether or not a likelihood of confusion exists. The Court will not do so because the “question of likelihood of confusion is ultimately one of fact.” A&H Sportswear, Inc., 237 F.3d at 237. Mold Medics sufficiently contends that Defendants’ websites and advertisements (and book) use the same Mark, which is likely to cause customer confusion. See U.S. Jaycees v. _ Philadelphia Jaycees, 639 F.2d 134, 142 (3d Cir. 1981) (“there is great likelihood of confusion when an infringer uses the exact trademark”); Opticians Ass’n of America v. Independent Opticians of American, 920 F.2d 187, 195 (3d Cir. 1990) (finding “likelihood of confusion ... □ inevitable, when ... the identical mark is used concurrently”). Discovery will reveal whether Mold Medics can produce evidence of a likelihood of confusion of customers. As to Count II, the Court finds that Mold Medics has plainly stated a claim of unfair competition under the Lanham Act. Section 15 U.S.C. § 1125(a) sets forth two distinct bases of liability — false association and false advertising. Section 1125(a)(1)(A) prohibits “false or misleading” claims that are “likely to cause confusion, or to cause mistake, or to deceive as to ... the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person[.]” Claims made under it are often called “false designation of origin” or “false association” claims. To establish such a claim, the owner of an unregistered mark “has the burden ... of proving the existence of a protectable mark.” E.T. Browne Drug Co. v. Cococare Prod. Inc., 538 F.3d 185, 191 (3d Cir. 2008). Another portion of the statute, subsection (a)(1)(B), forbids “commercial advertising or promotion” that “misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, 27 or commercial activities[.]” 15 U.S.C. § 1125(a)(1)(B). Claims under this provision are called “false advertising” claims. See Parks LLC vy. Tyson Foods, Inc., 863 F.3d 220, 225-26 (3d Cir. 2017). Mold Medics is advancing a claim for false association. (ECF No. 1, pp. 5-6); (ECF No. 32, pp. 16-17). To state a claim for false association under § 1125(a)(1)(A), “a plaintiff must show that: (1) its mark is legally protectable; (2) it owns the mark; and (3) the defendant’s use of the mark to identify its goods or services is likely to create confusion concerning the plaintiff's sponsorship or approval of those goods or services.” Facenda y. N.FL. Films, Inc., 542 F.3d 1007, 1014 (3d Cir. 2008). Mold Medics has set forth allegations, that if later proven to be true, support a claim for false association. As set forth above in the Court’s analysis of the trademark infringement claim, Mold Medics has clearly pled that it owns the Mark and registered the Mark. There is no question that Mold Medics has alleged that Defendants have utilized their Mark without their authorization. At this stage of the litigation, Mold Medics need not prove confusion was actually created; rather, it is entitled to obtain discovery in support of this claim. Lastly, as to Count III-Mold Medics’ claims of common law trademark infringement and unfair competition—it also survives Defendants’ motion to dismiss for the same reasons set forth previously herein. The test for common law infringement and unfair competition is identical to 7 The Third Circuit considers eight factors in analyzing this prong of a false association claim: (1) the level of recognition that the plaintiff has among the segment of the society for whom the defendant’s product is intended; (2) the relatedness of the fame or success of the plaintiff to the defendant’s product; (3) the similarity of the likeness used by the defendant to the actual plaintiff; (4) evidence of actual confusion (and the length of time the defendant employed the allegedly infringing work before evidence of actual confusion arose); (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant’s intent in selecting the plaintiff; and (8) likelihood of expansion of the product lines.” Facenda, 542 F.3d at 1020. 28 the test set forth for federal infringement and unfair competition. World Wrestling Fed’n Entertainment, Inc. v. Big Dog Holdings, Ind., 280 F.Supp. 2d 413, 446 (W.D. Pa. 2003). Defendants’ Rule 12(b)(6) motion will be denied. IV. CONCLUSION For the foregoing reasons of law and fact, by Order of Court to follow, the Court will deny Defendants’ Motion to Dismiss or Transfer (ECF No. 14). BY THE COURT: DihA & sot WILLIAM S. STICKMAN IV UNITED STATES DISTRICT JUDGE Ge} 22 Date 29