* Pursuant to 5TH CIR. R. 47.5, the court has determined

that this opinion should not be published and is not precedent

except under the limited circumstances set forth in 5TH CIR.

R. 47.5.4.

-1-

United States Court of Appeals

Fifth Circuit

FILED

April 10, 2006

Charles R. Fulbruge III

Clerk

IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 05-10317

ALPHA KAPPA ALPHA SORORITY INC; ALPHA PHI ALPHA FRATERNITY

INC; KAPPA ALPHA PSI FRATERNITY INC; OMEGA PSI PHI

FRATERNITY INC; DELTA SIGMA THETA SORORITY INC; PHI BETA

SIGMA FRATERNITY INC

Plaintiffs - Appellants

v.

CONVERSE INC

Defendant - Appellee

_________________________________________________________________

Appeal from the United States District Court

for the Northern District of Texas, Dallas Division

No. 3:03-CV-2954-B

_________________________________________________________________

Before KING, BARKSDALE, and PRADO, Circuit Judges.

KING, Circuit Judge:*

In this trademark and trade dress infringement action under

the Trademark Act of 1946 (the “Lanham Act”), as amended and

codified in 15 U.S.C. §§ 1051 et seq., the plaintiffs appeal an

order of the district court granting the defendant’s motion to

dismiss under Federal Rule of Civil Procedure 12(b)(6) for
1 The complaint identifies the six fraternities and

sororities bringing the lawsuit against Converse as (1) Alpha

Kappa Alpha Sorority, Inc., (2) Alpha Phi Alpha Fraternity, Inc.,

(3) Kappa Alpha Psi Fraternity, Inc., (4) Omega Psi Phi

Fraternity, Inc., (5) Delta Sigma Theta Sorority, Inc., and (6)

Phi Beta Sigma Fraternity, Inc. Given the overlapping nature of

their claims, this opinion will hereinafter refer to the

organizations collectively as “the plaintiffs.”

-2-

failure to state a claim upon which relief could be granted. The

district court dismissed the action because the complaint

presented only conclusory allegations of trademark infringement

with respect to a violation of section 32(1) of the Lanham Act,

15 U.S.C. § 1114(1), and failed to identify the specific elements

comprising their alleged common-law trademarks and trade dress

that deserved protection under section 43(a) and (c) of the

Lanham Act, 15 U.S.C. § 1125(a) and (c). Having disposed of the

federal claims, the district court declined to exercise

supplemental jurisdiction over the remaining state law claims

under TEX. BUS. & COM. CODE ANN. § 16.29 (Vernon 2005) for lack of

subject-matter jurisdiction. Alpha Kappa Alpha Sorority v.

Converse, Inc., 2005 WL 65598, at **2-5 (N.D. Tex. Jan. 12,

2005). For the following reasons, we AFFIRM in part, REVERSE in

part, VACATE in part, and REMAND.

I. FACTUAL AND PROCEDURAL BACKGROUND

This case arises out of a complaint filed on December 11,

2003, in the United States District Court for the Northern

District of Texas, Dallas Division, on behalf of six

predominantly African-American fraternities and sororities1
2 Although two plaintiffs share the same two-color

combination--Kappa Alpha Psi Fraternity and Delta Sigma Theta

Sorority both using red and white as identifying colors--no two

plaintiffs share the precise combination of colors and founding

year.

3 Converse notes in its brief that sales of the GREEKPAK

line ceased prior to the filing of the lawsuit. See Appellee’s

Br. at 1.

-3-

against defendant-appellee Converse, Inc. (“Converse”), a

manufacturer of sneakers and basketball shoes, alleging federal

and state claims of trademark and trade dress infringement, as

well as unfair competition. The complaint alleges that the

plaintiffs own a series of registered trademarks and unregistered

distinctive trademarks and trade dress, “some of which contain

the founding year(s), colors and identification” of the

plaintiffs. Compl. ¶ 20. The complaint also identifies the

distinctive two-color combination and founding year of each

plaintiff organization.2 Id. ¶ 24. The plaintiffs assert that

they “have generated substantial revenues from manufacturing,

selling, and licensing for manufacture and sale of, Greek

paraphernalia, including apparel, shoe wear, and other products”

that bear the distinctive marks and trade dress of the

organizations. Id. ¶ 28. 

According to the complaint, Converse produced and marketed a

line of athletic shoes called the GREEKPAK Weapon basketball shoe

(the “GREEKPAK line” or “GREEKPAK shoes”).3 Each model of the

GREEKPAK line features a two-color combination associated with
4 According to the complaint, Converse used advertising

slogans to promote the GREEKPAK line such as “no matter your

Greek affiliation, grab these quick for representation” and

“These GREEKPAK Weapon basketball shoes are proven to make you

proud. See you on the yard.” Compl. ¶¶ 36-37.

-4-

one of the plaintiff organizations and a small embroidered date

that corresponds to the founding year of that same organization

near the heel of the shoe. See id. ¶ 35 (“The years etched on

the [sic] Converse’s GREEKPAK shoes and the colors of the shoes

match precisely the colors and founding years of Plaintiffs’

Greek-based Sororities and Fraternities.”). In addition to the

conspicuous similarity between the shoes and the twocolor/founding year combinations of the plaintiffs, the complaint

avers that the marketing slogans4 used in advertising the

GREEKPAK line were “clearly designed to exploit and capitalize

financially” on the sense of pride felt by members of the

plaintiff organizations. Id. ¶ 38. Therefore, the plaintiffs

allege that the use of these marks is likely to cause confusion

among customers and potential customers as to the source and

sponsorship of the shoes. 

Converse filed a motion to dismiss under Rule 12(b)(6) on

January 30, 2004. The plaintiffs did not immediately file a

responsive pleading, but they did serve Converse with

interrogatories and requests for document production around the

same time. On February 12, 2004, Converse filed a motion to stay

the plaintiffs’ discovery requests, arguing that discovery could
5 The plaintiffs did not attach a proposed amended

complaint with their motion at this time.

-5-

not be undertaken until a scheduling order had been issued by the

court. Moreover, Converse argued that allowing discovery before

a ruling on its Rule 12(b)(6) motion would be premature. The

plaintiffs filed a response to Converse’s Rule 12(b)(6) motion on

February 17, 2004, and requested, in the alternative, leave to

amend the original complaint in the event the district court

decided to grant the motion to dismiss.5

On July 8, 2004, the district court issued an order denying

Converse’s motion to stay discovery as moot because the court had

not yet issued a scheduling order to initiate discovery. Shortly

thereafter, the case was transferred to a different judge. The

district court issued an Order Regarding Transition on August 17,

2004, that stayed the issuance of a scheduling order until the

court ruled on the pending motion to dismiss. 

The district court granted Converse’s motion to dismiss on

January 12, 2005. The district court found that the plaintiffs

failed to allege infringement of any specific registered

trademarks under section 32(1)(a) of the Lanham Act, 15 U.S.C.

§ 1114(1)(a). Alpha Kappa Alpha Sorority, 2005 WL 65598, at *3. 

With respect to the plaintiffs’ common-law trademark rights for

their unregistered two-color/founding year combinations under

section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), the

district court found that the plaintiffs had failed (1) to
-6-

identify the specific elements of their trademarks, and (2) to

allege “that they have ever used these color and year

combinations on any product, a prerequisite for common law

ownership of a trademark.” Id. at *4. The district court

similarly dismissed the claims of trade dress infringement and

dilution under the Lanham Act, finding that “[n]o Plaintiff has

alleged that there is any footwear belonging to any of them

bearing the alleged color and year combination, nor has any

Plaintiff identified the particular shoe that constitutes the

trade dress . . . .” Id. at **4-5. Given its dismissal of the

federal claims, the court dismissed the remaining state-law

claims, citing the policy “in favor of declining jurisdiction . .

. where all federal law claims have been dismissed.” Id. at *5

(citing Parker & Parsley Petroleum v. Dresser Indus., 972 F.2d

580, 590 (5th Cir. 1992)).

II. JURISDICTION

We instructed the parties to brief issues related to our

jurisdiction over this appeal. Our only jurisdictional concern

in this case is the timeliness of the filing of the notice of

appeal. Converse contends that the plaintiffs’ notice of appeal

was untimely because more than thirty days had lapsed since the

district court’s order dismissing their claims on January 12,

2005. The plaintiffs counter that the district court did not

deny its motion for reconsideration until January 20, 2005, which
6 Under prior law, a Rule 60(b) motion did not toll the

running of time for filing a notice of appeal whereas a timely

filed Rule 59(e) motion did. See Fischer v. United States, 759

F.2d 461, 465 n.4 (5th Cir. 1985). Pursuant to a 1993 amendment

to Rule 4(a)(4), however, it no longer matters how the motion for

reconsideration is characterized for purposes of tolling the

period for filing a notice of appeal. See FED. R. APP. P.

4(a)(4)(A)(v), (vi). 

-7-

would make the notice of appeal filed on February 18, 2005 fall

within the thirty-day period. 

Even though the Federal Rules of Civil Procedure do not

expressly recognize a “motion for reconsideration,” such motions

may properly be considered either a Rule 59(e) motion to alter or

amend judgment or a Rule 60(b) motion for relief from judgment. 

Hamilton Plaintiffs v. Williams Plaintiffs, 147 F.3d 367, 371

n.10 (5th Cir. 1998). Under the current version of the Federal

Rules of Appellate Procedure, both Rule 59(e) motions and those

Rule 60(b) motions filed no later than ten days after entry of

judgment toll the thirty-day time period within which a party may

file its notice of appeal until after entry of the order

disposing of the motion.6 See FED. R. APP. P. 4(a)(4)(A)(v), (vi). 

Because the notice of appeal was filed within thirty days of the

district court’s denial of the plaintiffs’ motion for

reconsideration, we have jurisdiction and proceed to the

substantive claims raised in this appeal. 

III. DISCUSSION

On appeal, the plaintiffs have challenged (1) the Memorandum

Order dismissing the plaintiffs’ claims and denying leave to
-8-

amend; (2) the Order Regarding Transition that deferred the

issuance of a scheduling order during the pendency of the

dismissal motion; and (3) orders denying the plaintiffs’

Expedited Motion for Reconsideration and denying the plaintiffs’

second motion for leave to amend. We consider each issue in

turn.

A. The District Court’s Dismissal of the Plaintiffs’ Lanham Act

Claims Under Rule 12(b)(6)

This court reviews de novo a dismissal for failure to state

a claim upon which relief could be granted under Federal Rule of

Civil Procedure 12(b)(6). Gen. Elec. Capital Corp. v. Posey, 415

F.3d 391, 395 (5th Cir. 2005). We employ the same standard as

the district court and liberally construe the complaint in the

light most favorable to the plaintiffs, accepting all wellpleaded facts as true. Plotkin v. IP Axess Inc., 407 F.3d 690,

696 (5th Cir. 2005). Motions to dismiss are rarely granted and

generally viewed with disfavor. Test Masters Educ. Servs., Inc.

v. Singh, 428 F.3d 559, 570 (5th Cir. 2005). Unless the

plaintiffs cannot prove any set of facts entitling them to

relief, the complaint should not be dismissed. Posey, 415 F.3d

at 395. We need not, however, accept as true conclusory

allegations, unwarranted factual inferences, or legal conclusions

in reviewing a district court’s dismissal under Rule 12(b)(6). 

Southland Sec. Corp. v. INSpire Ins. Solutions, Inc., 365 F.3d

353, 361 (5th Cir. 2004).
-9-

1. Count 1: Infringement of Federally Registered Marks

Under the Lanham Act

Although two of the plaintiffs (Alpha Phi Alpha and Phi Beta

Sigma) identified federally registered marks in the complaint,

see Compl. ¶ 21, the district court dismissed the claims relating

to these marks for failure to adequately allege infringement of

these registrations under section 32(1)(a) of the Lanham Act, 15

U.S.C. § 1114(1)(a). Alpha Kappa Alpha Sorority, 2005 WL 65598,

at *3. The plaintiffs’ brief on appeal does not address the

court’s action beyond briefly mentioning it. We deem the

plaintiffs’ appeal relating to their federally registered marks

to be abandoned. See Cutrera v. Bd. of Supervisors of La. State

Univ., 429 F.3d 108, 114 (5th Cir. 2005). We therefore affirm

the portion of the district court’s order that dismissed the

claims relating to infringement of the plaintiffs’ registered

trademarks. See Walker v. Thompson, 214 F.3d 615, 625 (5th Cir.

2000) (affirming in part the portion of a district court’s grant

of summary judgment where the plaintiff had abandoned the issue

in her appellate brief). 

2. Count 2: Unfair Competition Claims Under the Lanham Act

The principal question presented in this case is whether the

complaint adequately states a claim for infringement of any

common-law trademarks or trade dress. The problems that the

district court identified in the plaintiffs’ complaint are

actually quite narrow. With respect to the plaintiffs’ claims of
7 Section 43(a) provides, in relevant part:

(1) Any person who, on or in connection with any goods or

services, or any container for goods, uses in commerce

any word, term, name, symbol, or device, or any

combination thereof, or any false designation of origin,

false or misleading description of fact, or false or

misleading representation of fact, which--

(A) is likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation,

connection, or association of such person with

another person or as to the origin, sponsorship, or

approval of his or her goods, services, or

commercial activities by another person . . .

. . .

shall be liable in a civil action by any person who

believes that he or she is or is likely to be damaged by

such act.

15 U.S.C. § 1125(a)(1)(A).

8 The complaint refers interchangeably to the twocolor/founding year combinations as unregistered trademarks and

trade dresses. Indeed, the distinctions between trademarks and

trade dress in the law have largely disappeared. See 1 J. THOMAS

MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 8:1 (4th ed.

2005) (“Today, many types of designations protectable as ‘trade

dress’ are also registrable as ‘trademarks.’ Today, unregistered

trade dress is protected under federal Lanham Act § 43(a) under

the same rules as are trademarks.”); see also Two Pesos, Inc. v.

Taco Cabana, Inc., 505 U.S. 763, 773 (1992) (noting that “the

protection of trademarks and trade dress under § 43(a) serves the

same statutory purpose of preventing deception and unfair

competition”); Chevron Chem. Co. v. Voluntary Purchasing Groups,

Inc., 659 F.2d 695, 701 (5th Cir. 1981) (discussing trademark and

trade dress infringement as both deriving from “the common-law

tort of ‘unfair competition,’ or, as it is otherwise known,

‘passing off’”). As such, aside from noting any meaningful

differences in the case law, we see no compelling reason to

-10-

unfair competition alleging that Converse had unlawfully used

their common-law trademarks in violation of section 43(a) of the

Lanham Act, 15 U.S.C. § 1125(a),7 the district court held that

“the Plaintiffs fail to identify any of those common law

trademarks.”8 Id. Relying principally on the Second Circuit’s
separately address the trademark and trade dress claims raised

under section 43(a). 

-11-

decision in Landscape Forms, Inc. v. Columbia Cascade Co., 113

F.3d 373 (2d Cir. 1997), the district court stated that the

plaintiffs “merely describe how each organization has a color

combination and founding year associated with it and how these

same color combinations and years appear on Converse’s GREEKPAK

shoes, but they do not claim that the color and year combinations

are trademarks.” Id. In dismissing the trade dress claims, the

district court similarly concluded that the plaintiffs had

neither “allege[d] that they have ever used the year and color

combinations as trade dress” nor “articulated with particularity,

as is required, the elements comprising their trade dress.” Id.

at *4.

We now turn to the complaint to determine whether it suffers

from these perceived deficiencies in light of the wellestablished notice pleading standards. In order to determine

whether the plaintiffs claim that their two-color/founding year

combinations are trademarks or trade dress, we set out below in

haec verba most, although not all, of the references in the

plaintiffs’ complaint to the plaintiffs’ unregistered marks and

trade dress:

¶ 22: Plaintiffs have also conceived and developed items

containing Plaintiffs’ distinctive trade dress, which has

achieved notoriety as marks used solely by Plaintiffs or

their authorized representatives.
-12-

¶ 24: The founding years and organizational colors that

the Plaintiffs have adopted are unique to Plaintiffs’

identification and accomplishments and have acquired

significant meaning to the members of Plaintiffs’

organizations as well as secondary meaning to the general

public. The founding years and identifying colors of the

organizations are as follows:

Plaintiff Founding Year Distinctive Colors

Alpha Phi Alpha Fraternity 1906 Black and Gold

Alpha Kappa Alpha Sorority 1908 Pink and Green

Kappa Alpha Psi Fraternity 1911 Red and White

Omega Psi Phi Fraternity 1911 Purple and Gold

Delta Sigma Theta Sorority 1913 Red and White

Phi Beta Sigma Fraternity 1914 Royal Blue and White

¶ 27: Since at least as early as 1908, Plaintiffs have

also used their marks and trade dress worldwide in

connection with the manufacture, sale and licensing of

Greek paraphernalia, including apparel, shoe wear, and

other products.

¶ 28: Continually, since long prior to the acts

complained of herein, Plaintiffs have generated

substantial revenues from manufacturing, selling, and

licensing for manufacture and sale of, Greek

paraphernalia, including apparel, shoe wear, and other

products that contain Plaintiffs’ marks and trade dress.

¶ 29: The Plaintiffs’ marks and trade dress are

arbitrary, suggestive and inherently distinctive.

¶ 30: As a result of Plaintiffs’ efforts to promote their

organizations, trade dress and marks, these marks have

acquired in the minds of the public a secondary meaning,

and have become distinctive marks denoting identification

with and sponsorship from, the Plaintiffs’ organizations.

¶ 31: As a further result of Plaintiffs’ efforts, the

marks are recognized as being associated exclusively with

the services and products marketed or licensed by

Plaintiffs or their authorized representatives.

¶ 35: The years etched on the [sic] Converse’s GREEKPAK

shoes and the colors of the shoes match precisely the

colors and founding years of Plaintiffs’ Greek-based

Sororities and Fraternities.

¶ 43: Despite the limitless other marks and trade dress
-13-

that Converse could have chosen, it wrongfully

appropriated marks owned by Plaintiffs without permission

or other authorization from plaintiffs.

¶ 44: Plaintiffs’ marks and trade dress and Converse’s

GREEKPAK designs are strikingly and confusingly similar,

and Converse’s use of these marks causes and is likely to

continue to cause confusion among consumers and potential

consumers of the products of Plaintiffs and their

licensed vendors.

¶ 45: Converse’s use of these marks and trade dress for

the promotion and sale of its shoes is likely to cause

confusion as to whether Converse’s products are sponsored

or licensed by, or affiliated with, Plaintiffs and their

marks.

¶ 63: Plaintiffs identifying marks that have been

misappropriated by Converse are inherently distinctive

and/or have acquired distinctiveness through secondary

meaning.

¶ 64: Without authorization or consent, Converse has

deliberately and intentionally used Plaintiffs’ marks and

trade dress in commerce in connection with the

manufacturing, advertising, promotion, distribution, sale

and offering for sale of products that are directly

competitive with products marketed by Plaintiffs and

their authorized representatives.

As is evident from the quoted material from the plaintiffs’

complaint, the plaintiffs have, indeed, identified the elements

(the color and year combinations) comprising their trademarks or

trade dress; they have claimed that the color and year

combinations are trademarks or trade dress; and they have

asserted that Converse infringed upon their trademarks or trade

dress in promoting and selling its GREEKPAK shoes. Thus, under

the liberal notice pleading standards articulated in Federal Rule

of Civil Procedure 8, we conclude that the complaint adequately

apprised Converse of the cause of action under section 43(a) of
-14-

the Lanham Act. See Conley v. Gibson, 355 U.S. 41, 47 (1957)

(“[A]ll the rules require is a short and plain statement of the

claim that will give the defendant fair notice of what the

plaintiff’s claim is and the grounds upon which it rests.”)

(internal quotations omitted); Walker v. S. Cent. Bell Tel. Co.,

904 F.2d 275, 278 (5th Cir. 1990) (“Generally speaking if the

pleadings provide adequate notice, then an inference may be drawn

that all the elements of a cause of action exist.”). 

As the complaint indicates, when the plaintiffs are able to

develop their case, they intend to provide evidence of inherent

distinctiveness or of secondary meaning, which will be necessary

to establish that their marks or trade dress are protectable. 

See Sugar Busters, LLC v. Brennan, 177 F.3d 258, 269 (5th Cir.

1999) (noting that, on remand to the district court, the

plaintiffs “must demonstrate a high degree of proof to establish

secondary meaning”). But judging the complaint alone, it is

adequate to describe the marks or dress for which protection is

claimed, as well as commercial usage of the marks or dress.

In dismissing the plaintiffs’ unregistered trademark and

trade dress claims for failure to identify the marks and dress

with sufficient particularity, the district court relied on the

Second Circuit’s decision in Landscape Forms. Landscape Forms is

a very different case. First, it is not a ruling (or an appeal

from a ruling) on a Rule 12(b)(6) motion to dismiss; it is,

instead, an appeal from the grant of a preliminary injunction
-15-

following a hearing in the district court. Landscape Forms,

Inc., 113 F.3d at 375. Moreover, the Second Circuit’s

conclusion, after reviewing the complaint and the testimony of

the plaintiff’s witnesses at the hearing, was that the plaintiff

had failed “to articulate what makes its products inherently

distinctive such that, without proof of secondary meaning, there

is reason to believe that confusion is likely.” Id. at 382. 

In contrast to the comparatively more detailed description

of the claimed marks or dress in the plaintiff’s complaint in

this case, the complaint in Landscape Forms asserted only that

“[t]he product design and configuration of [Landscape’s]

PetoskeyTM Group Collection employs a number of distinctive

elements which, when taken together, constitute a trade dress

recognizable by architects, landscape architects and designers,

as well as the public at large.” Id. at 381 (internal quotations

omitted). The testimony of the plaintiff’s witnesses did little

to further elucidate the precise elements of the alleged trade

dress. For example, rather than articulating the “distinctive

elements” of the alleged trade dress, Landscape’s president

remarked that “[t]he look is kind of cantilevered” and “very

unexpected.” Id. An industrial designer at Landscape described

the furniture as “seem[ing] to float in this rather heavy-looking

framework.” Id. Faced with a complaint that was vacuous when it

came to describing the plaintiff’s trade dress and witnesses who

were not much more specific, the court concluded that the
9 Moreover, the Supreme Court’s subsequent pronouncement in

Wal-Mart Stores, Inc. v. Samara Bros., Inc. removed any doubt

that the Second Circuit’s holding that a trade dress action under

section 43(a) seeking to demonstrate that a product’s design is

-16-

descriptions were “too abstract” and “fail[ed] to indicate what

unique combination of features makes the trade dress of the ten

items in the Petoskey line inherently distinctive . . . .” Id.

at 381-82 (“If the law protected style at such a level of

abstraction, Bracque might have prevented Picasso from selling

cubist paintings in the United States.”). 

Citing the “acute” concern for protecting competition for

trade dress covering an array of items, the court stated that

trade dress law’s “focus on the overall look of a product does

not permit a plaintiff to dispense with an articulation of the

specific elements which comprise its distinct dress.” Id. at

380-81.

Without such a precise expression of the character and

scope of the claimed trade dress, litigation will be

difficult, as courts will be unable to evaluate how

unique and unexpected the design elements are in the

relevant market. Courts will also be unable to shape

narrowly-tailored relief if they do not know what

distinctive combination of ingredients deserves

protection. Moreover, a plaintiff’s inability to explain

to a court exactly which aspects of its product design(s)

merit protection may indicate that its claim is pitched

at an improper level of generality, i.e., the claimant

seeks protection for an unprotectable style, theme, or

idea. 

Id. at 381. 

Nothing in our opinion today conflicts with the Second

Circuit’s holding in Landscape Forms.

9 In fact, the Second
distinctive must make a showing of secondary meaning. 529 U.S.

205, 216 (2000).

-17-

Circuit’s analysis actually supports our holding that the

complaint sufficiently articulated the elements of the

plaintiffs’ unregistered trademarks and trade dress under section

43(a) of the Lanham Act such that it survives an initial motion

to dismiss and may proceed to the proof of secondary meaning

stage. See Abercrombie & Fitch Stores, Inc. v. Am. Eagle

Outfitters, Inc., 280 F.3d 619, 635 (6th Cir. 2002)

(distinguishing Landscape Forms by noting that “[a] complaint is

neither an injunction nor a judgment; it merely puts the

defendant on notice of the plaintiff’s claims”).

Finally, with respect to both the unregistered trademark and

trade dress claims, the district court also stated that the

plaintiffs had “fail[ed] to allege that they have ever used these

color and year combinations on any product, a prerequisite for

common law ownership of a trademark.” Alpha Kappa Alpha

Sorority, 2005 WL 65598, at *3 (citing Blue Bell, Inc. v. Farah

Mfg., Co., 508 F.2d 1260, 1267 (5th Cir. 1975)). Again, the

district court’s conclusion in this regard is difficult to square

with the excerpts from the complaint discussed above. See Compl.

¶¶ 27, 28. Moreover, while we do not disagree with the

proposition that plaintiffs must allege use of the unregistered

trademarks or trade dress to gain protection under the common

law, we note that the court in Blue Bell was concerned with an
10 Section 43(c) provides, in relevant part:

(1) The owner of a famous mark shall be entitled, subject

to the principles of equity and upon such terms as the

court deems reasonable, to an injunction against another

person’s commercial use in commerce of a mark or trade

name, if such use begins after the mark has become famous

and causes dilution of the distinctive quality of the

mark, and to obtain such other relief as is provided in

this subsection. . . .

. . . 

(2) In an action brought under this subsection, the owner

of the famous mark shall be entitled only to injunctive

relief as set forth in section 1116 of this title unless

the person against whom the injunction is sought

willfully intended to trade on the owner’s reputation or

to cause dilution of the famous mark. If such willful

intent is proven, the owner of the famous mark shall also

be entitled to the remedies set forth in sections 1117(a)

and 1118 of this title, subject to the discretion of the

court and the principles of equity.

15 U.S.C. § 1125(c).

-18-

entirely different question--namely, whether an internal shipment

of goods constituted sufficient commercial use to gain protection

as a common-law trademark--than the one presented in this appeal. 

See Blue Bell, Inc., 508 F.2d at 1265. Because a fair reading of

the complaint demonstrates that the plaintiffs sufficiently

alleged commercial use of their trademarks and trade dress to

satisfy notice pleading standards, we conclude that the complaint

was also not deficient in this regard. 

3. Count 3: Anti-Dilution Claim Under the Lanham Act

The district court similarly dismissed the plaintiffs’ antidilution claims under section 43(c) of the Lanham Act, 15 U.S.C.

§ 1125(c),10 because the complaint allegedly “fail[ed] to

identify any trademarks or trade dress that any of the Plaintiffs
11 In order to eventually prevail on their federal dilution

claim, the plaintiffs must prove that the two-color/founding year

combinations are “famous and distinctive” and that the

organizations experienced “actual economic harm” from Converse’s

dilution of those marks and dresses. See Advantage Rent-A-Car,

-19-

own or have used that have also been used by Converse.” Alpha

Kappa Alpha Sorority, 2005 WL 65598, at *5. Supplementing the

portions of the complaint excerpted above, the complaint sets

forth its anti-dilution claim as follows:

¶ 70: Plaintiffs’ marks are distinctive and famous

according to a number of factors including, but not

limited to, the degree of inherent or acquired

distinctiveness of the marks; the duration and extent of

use of the mark in connection with Plaintiffs’ goods and

services; and the degree of recognition of the marks in

the trading areas and channels of trade of Plaintiffs and

Defendant.

¶ 71: Converse’s unauthorized and unlicensed use of

Plaintiffs’ marks after the marks have become famous has

caused dilution of the distinctive quality of the mark,

and infringes Plaintiffs’ rights to its famous marks in

violation of 15 U.S.C. Section 1125(c)(1). Converse’s

actions, unless restrained, also has the potential to

embolden other companies to believe that it is

permissible to infringe upon Plaintiffs’ marks and trade

dress without seeking permission or a license.

¶ 72: Upon information and belief, Converse adopted and

is displaying the marks and trade dress with full

knowledge of Plaintiffs’ rights to its famous marks and

with the willful intention to trade on Plaintiffs’

reputation as embodied in their marks or cause dilution

of such marks. Thus, Converse has willfully violated

Plaintiffs’ rights under 15 U.S.C. Section 1125(c)(2).

For the reasons described in the preceding section of this

opinion, we hold only that the plaintiffs have satisfied the

notice pleading requirements to state a claim for dilution of

their unregistered marks and trade dress.11 Accordingly, we
Inc. v. Enter. Rent-A-Car, Co., 238 F.3d 378, 380 (5th Cir.

2001). The fame of the mark need only be proven within the

relevant market for consumers of athletic shoes, not in a broader

market. Id. (citing RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25 cmt.

e (1995)). The resolution of these issues, however, depends upon

further factual development.

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reverse the district court’s dismissal of this claim as well. 

B. The District Court’s Decision to Postpone the Issuance of a

Scheduling Order

We review a district court’s administrative management of a

case, including its enforcement of local rules and issuance of

scheduling orders, for abuse of discretion. Macklin v. City of

New Orleans, 293 F.3d 237, 240 (5th Cir. 2002). Rule 16(b) of

the Federal Rules of Civil Procedure authorizes federal courts to

organize the discovery process through a scheduling order. FED.

R. CIV. P. 16(b); see also Barrett v. Atl. Richfield Co., 95 F.3d

375, 380 (5th Cir. 1996). Pending a case surviving a motion to

dismiss under Rule 12(b)(6), however, the district court may wish

to postpone the issuance of a scheduling order until it decides

whether the case merits further factual development. See, e.g.,

Ehlmann v. Kaiser Found. Health Plan of Tex., 198 F.3d 552, 554

(5th Cir. 2000). The district court cannot be said to have

abused its discretion in delaying the issuance of a scheduling

order until its ruling on the Rule 12(b)(6) motion. 

C. The District Court’s Denials of the Plaintiffs’ Motions for

Reconsideration and for Leave to Amend the Complaint

In view of our decision on the dismissal of the plaintiffs’
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complaint, the appeals from the district court’s denial of the

plaintiffs’ motion for reconsideration and from its denial of the

plaintiffs’ second motion for leave to amend the complaint are

moot.

IV. CONCLUSION

For the foregoing reasons, we AFFIRM the portion of the

district court’s order dismissing the plaintiffs’ claims under

section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1). We REVERSE

the portion of the district court’s order dismissing the

plaintiffs’ claims under section 43(a) and (c) of the Lanham Act,

15 U.S.C. § 1125(a),(c). Consistent with this opinion, we VACATE

the portion of the district court’s order declining to exercise

supplemental jurisdiction over the plaintiffs’ state-law claims

for lack of subject-matter jurisdiction. Costs shall be borne by

Converse.