This, LLC v. Jaccard Corporation et al

Filing 39

ORDER: Defendant's motion to stay is GRANTED to permit the United States District Court for the Western District of New York to rule on the applicability of the first-filed rule.(Poueymirou, M)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
THIS, LLC,
Plaintiff,
v.
JACCARD CORPORATION,
Defendant.

Civil No. 3:15CV1606 (JBA)

April 26, 2016

RULING GRANTING DEFENDANT’S MOTION TO STAY
In this action, Plaintiff This, LLC (“TLLC”) alleges state and federal trademark
and copyright violations, unfair competition under Connecticut common law, common
law unjust enrichment and conversion, and unfair trade practices under Connecticut
statute. Defendant Jaccard Corporation (“Jaccard”) moves [Doc. # 17] to transfer this case
to the United States District Court for the Western District of New York (“WDNY”)
pursuant to 28 U.S.C. § 1404(a), or to dismiss, transfer, or stay the case under the “firstfiled rule.” Defendant also moves to dismiss Plaintiff’s claims for copyright infringement
(Count Five), trademark dilution (Count Seven), and conversion (Count Eleven). For the
following reasons, Jaccard’s motion to stay this case is granted to permit the WDNY to
rule on the applicability of the first-filed rule. 1
I.

Background

TLLC is a limited liability company organized under Connecticut laws, with its
principal place of business in Madison, Connecticut. (Compl. [Doc. # 1] ¶ 6.) For nearly
sixteen years, it has manufactured, distributed, and offered for sale and sold “unique

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As such, the Court does not reach Defendant’s motion to dismiss counts Five,
Seven, and Eleven.

novelty items . . . [including] wooden cooking skewers for roasting products (e.g.,
marshmallows or hotdogs) over an open fire or fire place (the ‘TLLC Products’) in
interstate, intrastate and international commerce under and in connection with its
SMORSTIX trademark.” (Id. ¶ 9.) These products include: SMORSTIX, SMORPAK, THE
PERFECT

MARSHMALLOW

ROASTING

STIX,

EVERYTHING

BUT

THE

CAMPFIRE, SMORNAMENT, SMORBOX, and SMORBAR. (Id. ¶ 21.)
Jaccard is a New York Corporation with its principal place of business in
Rochester, New York. (Id. ¶ 7.) It “manufactur[s], distribut[es], market[s], offer[s] for sale
and sells home, kitchen and recreational specialty products on both a national and
international level,” including what Plaintiff describes as “counterfeit and infringing
packaged wooden skewers” that have “identical dimensions and configurations to those
of the TLLC Products” with “confusingly similar name[d] ‘S’MORESFIRESTIX’ and
‘S’MORESGLOSTIX.’” (Id. ¶ 39.)
On April 23, 2015, counsel for TLLC sent Jaccard a cease-and-desist letter
advising Defendant that TLLC was “the owner of an extensive portfolio of valuable
registered trademarks (‘the Marks’)” from which it had acquired substantial goodwill, and
that it had learned that Jaccard was “marketing, promoting and selling virtually identical
roasting sticks under . . . confusingly similar names,” with images of the infringing
products attached to the letter. (April 23 Ltr., Ex. R to Compl. at 122–24.) It further stated
that “Jaccard’s unauthorized use of the TLLCIP on or in connection with its manufacture,
distribution, marketing, offering for sale and sale of the Infringing Products constitute[d]
willful and intentional infringement of TLLC’s valuable rights in and to the TLLCIP” that
was “causing confusion in the marketplace and leading customers to erroneously believe
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that Jaccard and its Infringing Products are in some way sponsored, approved or
otherwise affiliated with TLLC,” and that this conduct violated a variety of federal laws as
well as “common law trademark infringement, unfair competition and copyright
infringement.” (Id. at 123.) TLLC demanded that Jaccard:
1. Cease and desist any and all use of the TLLCIP or any confusingly
similar marks, logos, names, or unauthorized derivatives thereof on or
in connection with the manufacture, marketing, distribution, offer for
sale or sale of the Infringing Products in the United States, Canada and
throughout the world.
2. Provide [TLLC’s] office with a complete written accounting of all past
and current sales to date in connection with Infringing Products.
3. Provide [TLLC’s] office with a complete written accounting of all
Infringing Products remaining in inventory or in transit from your
suppliers.
4. Provide [TLLC’s] office with identification and contact information of
each and every supplier, distributor, and/or manufacturer from whom
you obtained any and all materials, products and/or merchandise
relating to the Infringing Products.
5. Provide this office with the identification and contact information of
each and every distributor and/or merchant to whom you supplied,
sold or otherwise enabled such individual or entity to distribute,
market, offer for sale or sell the infringing products.
(Id. at 124.) TLLC also informed Jaccard that it was “fully prepared to pursue its civil
remedies in this matter, but [wa]s presently amenable to reaching a resolution without
the need for litigation, provided that Jaccard fully cooperate[d] with each of the above
referenced demands within five (5) business days from the date of the document.” (Id.)
On April 27, 2015, four days after receipt of this letter, Jaccard filed a Declaratory
Judgment Complaint in the WDNY. See Jaccard Corporation v. This LLC, 15-cv-06248
(W.D.N.Y.). The following day, Jaccard’s counsel emailed Plaintiff’s counsel, confirming
receipt of the cease-and-desist letter and indicating an interest in “discuss[ing] this matter
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. . . at [Plaintiff’s] convenience.” (Email Correspondence, Ex. T to Compl. at 158.) On
May 1, 2015, Plaintiff demanded that Jaccard withdraw its declaratory judgment action
and “engage TLLC . . . in good faith settlement discussions” (May 1, 2015 Ltr., Ex. U to
Compl. at 162), to which Jaccard responded by indicating a “willing[ness] to discuss an
amicable resolution of this dispute” (May 6, 2015 Ltr., Ex. V to Pl.’s Compl. at 165). The
parties appear to have engaged in on-and-off settlement negotiations without success.
Several months later, on November 4, 2015, TLLC filed this action and moved
[Doc. # 3] for a Temporary Restraining Order and Order to Show Cause for Preliminary
Injunction. 2 The next day, TLLC filed a motion [Doc. # 9] in the WDNY action to dismiss
or transfer that action to this Court. On November 30, 2015, Jaccard moved in this action
to dismiss, stay, or transfer TLLC’s complaint to the WDNY. These dueling motions
remain pending in the respective districts.
II. Discussion
“As a general rule, where there are two competing lawsuits, the first suit should
have priority.” Employers Ins. of Wausau v. Fox Entm’t Grp., Inc., 522 F.3d 271, 274–75
(2d Cir. 2008); Schnabel v. Ramsey Quantitative Sys., Inc., 322 F. Supp. 2d 505, 509–10
(S.D.N.Y. 2004) (“Courts in this Circuit adhere to the first filed rule: ‘Where two courts
have concurrent jurisdiction over an action involving the same parties and issues, courts
will follow a “first filed” rule whereby the court which first has possession of the action

2

During a telephonic conference held on the record on November 9, 2015, this
Court denied Plaintiff’s motion for a temporary injunction due to the “absence of any
showing of some immediate circumstance of irreparable injury beyond the alleged
ongoing infringing conduct known to Plaintiff since March 2015,” but granted its
application for an order to show cause. (Order to Show Cause [Doc. # 14] at 1.)
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decides it.’” (quoting Clarendon Nat’l Ins. Co. v. Pascual, 99 Civ. 10840, 2000 WL 270862
at *7 (S.D.N.Y. Mar. 13, 2000)). “This rule embodies considerations of judicial
administration and conservation of resources by avoiding duplicative litigation and
honoring the plaintiff’s choice of forum,” although it does not constitute an “invariable
mandate” but a “presumption that may be rebutted by proof of the desirability of
proceeding in the forum of the second-filed action.” Employers Ins. of Wausau, 522 F.3d
at 275.
Preliminarily, however, it must be determined “which court should grapple with
the issue of where the case should proceed.” MSK Ins., Ltd. v. Employers Reinsurance
Corp., 212 F. Supp. 2d 266, 267 (S.D.N.Y. 2002). Courts in this Circuit have held that “the
court before which the first-filed action was brought determines which forum should hear
the case.” Id. (collecting cases); see also AEP Energy Servs. Gas Holding Co. v. Bank of Am.,
N.A., 626 F.3d 699, 723 (2d Cir. 2010) (“While the decision whether or not to stay or
dismiss a proceeding rests within a district judge’s discretion, normally sound judicial
discretion dictates that the second court decline its consideration of the action before it
until the prior action before the first court is terminated.” (internal quotation marks and
alterations omitted)); Reliance Ins. Co. v. Six Star, Inc., 155 F. Supp. 2d 49, 54 n.2
(S.D.N.Y. 2001) (“The court in which the first-filed case was brought decides whether the
first-filed rule or an exception to the first-filed rule applies.”); Citigroup Inc. v. City
Holding Co., 97 F. Supp. 2d 549, 557 (S.D.N.Y. 2000) (“Indeed, it is the court in which the
first-filed action was brought that should decide whether an exception to the first-filed
rule applies.”).

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Given that both courts with the same parties’ respective actions have jurisdiction
and the issues are the same although presented in different modes (declaratory judgment
action versus direct action), the Court declines to consider the pending substantive
motions and grants Defendant’s motion to stay this action to permit the Honorable David
G. Larimer to decide whether the first-filed rule should be followed or whether TLLC has
rebutted the rule’s presumptive force by showing a balance of convenience or other
special circumstances such that the second-filed action’s chosen forum should prevail as
the forum for the parties’ dispute. Employers Ins. of Wausau, 522 F.3d at 274–75
(recognizing “balance of convenience” and certain “special circumstances” as two
exceptions to the general presumption that “where there are two competing lawsuits, the
first should have priority.”).
III.

Conclusion

For the foregoing reasons, Defendant’s Motion [Doc. # 17] to Stay is GRANTED
and no further action will be taken in this case pending determination by the WDNY of
the applicability of the first-filed rule or the existence of exceptions.

IT IS SO ORDERED.
/s/
Janet Bond Arterton, U.S.D.J.
Dated at New Haven, Connecticut this 26 day of April 2016.

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