United States District Court, D. Maryland
LIPTON HOLLANDER UNITED STATES DISTRICT JUDGE.
trademark infringement case, plaintiff TEKsystems, Inc.
(“TEKsystems”), a Maryland corporation that
offers information technology staffing and services, has sued
defendant TekSavvy Solutions, Inc. (“TekSavvy”),
a Canadian company in the telecommunications and web
development industry. ECF 1, ¶¶ 1-2 (Complaint).
The dispute stems from the parties' use of the term
“TEKSAVVY” as part of their respective
has moved for leave to file an amended complaint, pursuant to
Fed.R.Civ.P. 15. ECF 29. The motion is accompanied by a
memorandum of law (ECF 29-1) (collectively,
“Motion”), and the proposed Amended Complaint.
proposed Amended Complaint adds a declaratory judgment claim
against defendant. See ECF 29-2 at 5-6.
Plaintiff's original Complaint contained a similar
declaratory judgment claim (ECF 1 at 4), which this Court
dismissed for failure to state a claim on October 25, 2017.
See ECF 21. In particular, the earlier declaratory
judgment claim was dismissed because the Court found that
there was no genuine threat of litigation. See Id.
at 12. However, since that time, TekSavvy has filed a
counterclaim for copyright infringement against TEKsystems
(see ECF 23), and TEKsystems argues that the
counterclaim creates a case or controversy. See ECF
29-1 at 1.
proposed Amended Complaint, plaintiff seeks a declaration
that TekSavvy has not and cannot acquire trademark rights in,
or register, the mark “TEKSAVVY, ” based on
TekSavvy's use of the term on its Canadian blog, because
“such use is not a ‘use in commerce' in the
United States.” ECF 29-2, ¶ 21. Further, plaintiff
seeks a declaration that plaintiff has the exclusive right to
use the term “TEKSAVVY” in the United States in
connection with any IT-related blog or services. Id.
opposes the Motion. ECF 30 (“Opposition”).
TEKsystems did not reply. No. hearing is necessary to resolve
the Motion. See Local Rule 105.6.
Motion to Amend implicates Fed.R.Civ.P. 15(a)(2). Under Rule
15(a)(2), the “court should freely give leave [to
amend] when justice so requires.” See Foman v.
Davis, 371 U.S. 178, 182 (1962); Laber v.
Harvey, 438 F.3d 404, 426 (4th Cir. 2006) (en banc);
Simmons v. United Mortgage & Loan Inv., LLC, 634
F.3d 754, 769 (4th Cir. 2011). “[T]he grant or denial
of an opportunity to amend is within the discretion of the
District Court . . . .” Foman, 371 U.S. at
182; see also Booth v. Maryland, 337 F. App'x
301, 312 (4th Cir. 2009) (per curiam). Indeed,
Foman, 371 U.S. at 182, “mandates a liberal
reading of the rule's direction for ‘free'
allowance: motions to amend are to be granted in the absence
of a ‘declared reason' ‘such as undue delay,
bad faith or dilatory motive . . . repeated failure to cure
deficiencies by amendments previously allowed, undue
prejudice to the opposing party . . . [or] futility of
amendment, etc.'” Ward Elecs. Serv., Inc. v.
First Commercial Bank, 819 F.2d 496, 497 (4th Cir.
1987); see Booth, 337 F. App'x at 312.
granting leave to amend clearly would not cause undue delay
or undue prejudice. Therefore, I turn to discuss futility.
motion to amend can be denied on the basis of futility where
the proposed amendment “could not withstand a motion to
dismiss.” Perkins v. United States, 55 F.3d
910, 917 (4th Cir. 1995); see also Frank M. McDermott,
Ltd. v. Moretz, 898 F.2d 418, 420-21 (4th Cir. 1990)
(“There is no error in disallowing an amendment when
the claim sought to be pleaded by amendment plainly would be
subject to a motion to dismiss under Fed.R.Civ.P.
12(b)(6).”). “Unless a proposed amendment may
clearly be seen to be futile because of substantive or
procedural considerations . . . conjecture about the merits
of the litigation should not enter into the decision whether
to allow amendment. Davis v. Piper Aircraft Corp.,
615 F.2d 606, 613 (4th Cir. 1980) (internal citations
omitted). “Leave to amend . . . should only be denied
on the ground of futility when the proposed amendment is
clearly insufficient or frivolous on its face.”
Johnson v. Oroweat Foods Co., 785 F.2d 503, 510 (4th
Cir. 1986) (citing Davis, 615 F.2d at 613).
Opposition, TekSavvy asserts that the proposed amendment is
futile for two reasons. ECF 30 at 6-7. First, defendant
contends that the “declaratory judgment claim relies on
the incorrect legal standard.” Id. Defendant
maintains that the Lanham Act, which grants trademark rights,
has no geographic requirement such that “‘use in
commerce' in the United States, ” as opposed to
“use in commerce” generally, is a
relevant term. Id.
not immediately apparent that defendant's contention is
accurate, or even relevant. However, even if TekSavvy were
correct that the phrase “use in commerce, ” as it
pertains to trademark rights, has no geographic limitation,
plaintiff's declaratory judgment claim would not be
futile. This is because plaintiff also alleges:
“TEKsystems is entitled to the exclusive use of its
TEKSAVVY mark by virtue of its registration and continuous
use of TEKSAVVY in interstate commerce for more than five (5)
years. . . .” ECF 29-2, ¶ 22. As a result,
plaintiff seeks “an Order of Court declaring that
TEKsystems has the exclusive right to use its TEKSAVVY mark
in the United States in connection with any IT-focused blog
or related IT services . . . and that [TekSavvy] cannot
register the mark.” Id. ¶ 23.
element of the declaratory judgment claim does not rely on
geography, and does not appear to be “insufficient or
frivolous on its face.” Notably, TekSavvy does not
discuss this part of the declaratory judgment claim. Simply
because a complaint alleges a legal theory that may prove to
be unsuccessful does not preclude amendment of the complaint.
See Next Generation Grp., LLC v. Sylvan Learning Centers,
LLC, CCB-11-0986, 2012 WL 37397, at *3 (D. Md. Jan. 5,
2012) (finding an amendment warranted “because at least
some of its claims are not futile”). Therefore, the
amendment is not futile on this basis.
also argues that TEKsystems' claim must fail because
TekSavvy's blog began in 2011 and TEKsystems' blog
began in 2012. ECF 30 at 7. According to TekSavvy, plaintiff
therefore “should have been particularly attuned to the
‘TekSavvy' blog that already existed in
2011.” Id. This argument appears to be based
on an assessment of the merits of ...