Ardmor, Inc. v. Ardmor Construction LLC — Trademark Infringement and Fraud Claims Dismissed for Failure to Plead Geographic Use and Intent

Background

Plaintiff Ardmor, Inc., a Pennsylvania corporation, has used the marks "Ardmor" and "Ardmor Windows & Doors" since March 2015 for installation, maintenance, replacement, and repair of doors and windows, primarily along the East Coast in Pennsylvania, New Jersey, New York, and Delaware. Defendant Ardmor Construction LLC, a Minnesota limited liability company, began using the designation "Ardmor" in September 2017 for roofing and siding services in Minnesota, Wisconsin, and Iowa, and later expanded into window installation. Defendant obtained U.S. Trademark Registration No. 5,664,330 for "Ardmor" for roofing services in January 2019.

Plaintiff filed trademark applications in July 2024, but the USPTO denied registration citing Defendant's existing registration. Plaintiff then filed this action asserting five claims: false designation of origin under the Lanham Act (Count I), deceptive trade practices under Minnesota law (Count II), unjust enrichment (Count III), fraud on the USPTO justifying cancellation of Defendant's registration (Count IV), and tortious interference with prospective economic advantage (Count V). Defendant moved to dismiss all counts under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim.

The Court’s Holding

The court granted Defendant's motion to dismiss all counts without prejudice. On Count I for trademark infringement, the court held that Plaintiff failed to allege ownership of a valid common law trademark in the relevant geographic area. Although Plaintiff alleged receiving customer inquiries from Minnesota, Wisconsin, and Iowa, the court found that business inquiries alone do not establish trademark use, and Plaintiff's allegations centered on its East Coast market. The court also rejected Plaintiff's "zone of natural expansion" argument, noting that Eighth Circuit precedent takes a narrow view of this doctrine and Plaintiff alleged no intent to expand into the relevant states.

On Count IV for fraud on the USPTO, the court held that Plaintiff failed to plead facts showing Defendant knowingly made false material representations with intent to deceive the USPTO. The court explained that a trademark applicant is not obligated to investigate and report all other possible users, and mere awareness of another party's use is insufficient to establish fraud. Because Plaintiff alleged only that Defendant knew of Plaintiff's use but provided no specific facts supporting willful intent to deceive, the fraud claim failed.

The court dismissed the remaining state law claims (Counts II, III, and V) because they were coextensive with the federal Lanham Act claim and suffered from the same factual deficiencies. For Count V, the court additionally found that Plaintiff failed to plead facts showing Defendant intentionally interfered with a reasonable expectation of economic advantage or that Plaintiff would have realized any economic benefit in the relevant geographic area.

Key Takeaways

• Common law trademark ownership requires actual use of the mark in the relevant geographic area, and mere customer inquiries from that area are insufficient to establish use.
• The zone of natural expansion doctrine is narrowly construed in the Eighth Circuit and requires allegations showing intent to expand into the contested geographic market.
• To state a claim for fraud on the USPTO, a plaintiff must plead specific facts showing the applicant knowingly made false material representations with willful intent to deceive, not merely that the applicant was aware of another party's use.
• State law claims for deceptive trade practices, unjust enrichment, and unfair competition that mirror Lanham Act claims will be analyzed under the same standards and dismissed for the same deficiencies.
• A claim for tortious interference with prospective economic advantage requires factual allegations showing intentional interference and a reasonable probability of realizing economic benefit in the relevant market.

Why It Matters

This decision reinforces the geographic limitations of common law trademark rights and the difficulty of establishing trademark protection in markets where a business has received inquiries but has not actually operated or demonstrated intent to expand. It underscores that national advertising and brand recognition alone do not create enforceable trademark rights in every geographic market.

The ruling also clarifies the heightened pleading standard for fraud on the USPTO, emphasizing that applicants have no duty to investigate and disclose all possible conflicting users, and that fraud requires specific factual allegations of knowing and willful deception. This protects trademark applicants from cancellation claims based solely on allegations that they were aware of another party's use.