The opinion of the court was delivered by: B. Lynn Winmill Chief Judge United States District Court
MEMORANDUM DECISION AND ORDER
The Court has before it two motions to dismiss for lack of subject matter jurisdiction filed by Defendant Pure Power, LLC. The motions are fully briefed and at issue. For the reasons explained below, the Court will deny both motions.
Plaintiffs Navistar, Inc. ("Navistar"), PurePower Technologies, LLC, and International Engine Intellectual Property Company, LLC ("International Engine"), brought suit for unfair competition and trademark infringement under the Lanham Act and for deceptive advertising and unfair competition under Idaho law. The three plaintiffs are related companies that manufacture diesel engines and emissions control technology which are marketed internationally. See Complaint (Dkt. No. 1) at ¶ 3. Navistar formed PurePower Technologies LLC in late 2009 to produce diesel engine systems and advanced emissions control systems. Id. at ¶ 9.
As of March 2010, International Engine has five applications for the PUREPOWER (or PURE POWER) mark pending with the United States Patent Office. Id. at ¶ 10. Navistar and PurePower Technologies LLC license the PUREPOWER mark from International Engine. Id. at ¶ 13. This mark is used on various components associated with diesel engines and emissions control systems and is also featured on plaintiffs' advertising materials and website. Id. at ¶¶ 11, 13-14.
Plaintiffs' original complaint stated that the defendant Pure Power sells diesel exhaust fluid products bearing the words "PURE POWER" within the same market. Id. at ¶ 16. Plaintiffs also allege that the defendant did not begin selling products bearing this mark until late 2010, months after International Engine filed for the PUREPOWER mark and thus in violation of their prior rights. Id. at ¶¶ 18-19.
In response, the defendant filed a motion to dismiss under Rules 12(b)(1) and (6), alleging that plaintiffs' failure to use the mark in commerce destroys both federal question jurisdiction under the Lanham Act and diversity jurisdiction. The defendant points out that International Engine only filed an intent-to-use application with the Patent Office in March 2010, and asserts that whatever sales plaintiffs have made are simply "intra-company sales" and thus do not fit within the definition of commerce under the Lanham Act. Id.
Plaintiffs responded by amending their complaint to specifically allege that they use the PUREPOWER mark in commerce and have done so "since at least as early as March 2010." See Amended Complaint (Dkt. No. 15) at ¶ 10. Plaintiffs also submitted several photos showing engine parts bearing the PUREPOWER mark as well as a tradeshow booth bearing the same name.
The defendant responded by filing a second motion to dismiss, asserting that the amended complaint did not cure the flaws contained in the original complaint.
This Court has subject matter jurisdiction over all actions arising under the Lanham Act. See 15 U.S.C. § 1121(a). A challenge to this Court's subject matter jurisdiction under Rule 12(b)(1) may be either facial or factual. See White v. Lee, 227 F.3d 1214, 1242 (9th Cir.2000). In a facial attack, the challenger asserts that the allegations contained in a complaint are insufficient on their face to invoke federal jurisdiction. Id. To the degree that the defendant's attack is facial, the amended complaint clearly contains sufficient allegations on its face to overcome that challenge. See Rhoades v. Avon Products, Inc., 504 F.3d 1151, 1157-58 (9th Cir. 2007) (rejecting facial challenge to amended complaint in trademark infringement action).*fn1
The core of the defendant's challenge appears, however, to be factual. That is, the defendant is alleging that there is no evidence that plaintiffs have made anything beyond "token use" of the mark. When a party makes a factual challenge to the Court's subject matter jurisdiction, the Court may review evidence beyond the complaint without converting the motion to dismiss into a motion for summary judgment. White, 227 F.3d at 1242. "Once the moving party has converted the motion to dismiss into a factual motion by presenting affidavits or other evidence properly brought before the court, the party opposing the motion must furnish affidavits or other evidence necessary to satisfy its burden of establishing subject matter jurisdiction." Safe Air for Everyone v. Meyer, 373 F.3d 1035, ...