Unitek Solvent Services, Inc. v. Chrysler Group LLC
Filing
241
ORDER GRANTING PLAINTIFF'S MOTION FOR VOLUNTARY DISMISSAL AND DISMISSING DEFENDANT'S COUNTERCLAIMS 220 . Signed by JUDGE DERRICK K. WATSON on 10/31/2014. ~ Unitek's motion for voluntary dismissal is hereby GRANTED. Unitek Count 1 is dismissed without prejudice. Unitek Counts 25 are dismissed with prejudice. As a result of the dismissal of Unitek's claims, the infringement portion of Chrysler's Counterclaim 1 is dismissed with prejudice as moot. F inally, the cancellation portion of Counterclaim 1 and all of Counterclaim 2 are dismissedwithout prejudice. (ecs, )CERTIFICATE OF SERVICEParticipants registered to receive electronic notifications received this document electronically at the e-mail address listed on the Notice of Electronic Filing (NEF). Participants not registered to receive electronic notifications were served by first class mail on the date of this docket entry
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAI`I
UNITEK SOLVENT SERVICES,
INC., a Hawai‘i Corporation,
Plaintiff/CounterclaimDefendant,
CIVIL NO. 12-00704 DKW-RLP
ORDER GRANTING PLAINTIFF’S
MOTION FOR VOLUNTARY
DISMISSAL AND DISMISSING
DEFENDANT’S COUNTERCLAIMS
vs.
CHRYSLER GROUP LLC, a Delaware
Limited Liability Company,
Defendant/CounterclaimPlaintiff.
ORDER GRANTING PLAINTIFF’S MOTION FOR VOLUNTARY
DISMISSAL AND DISMISSING DEFENDANT’S COUNTERCLAIMS
Following an order from this Court denying its motion for preliminary
injunction, an order that was affirmed by the Ninth Circuit, Unitek no longer wishes
to pursue its trademark infringement claims and seeks to resolve the parties’
remaining registration/cancellation claims in the proceeding before the Trademark
Trial and Appeal Board (“TTAB”) that was stayed in March 2013. Because Unitek
has agreed to dismiss all of its infringement claims with prejudice, Chrysler’s
infringement-related counterclaim seeking declaratory relief is moot, leaving this
Court without any non-registration/cancellation-related issues. The Court dismisses
the registration/cancellation claims without prejudice and defers to the TTAB for
resolution of those claims.
BACKGROUND
The parties are familiar with the background of this case, as described in the
Court’s September 30, 2013 order denying Unitek’s motion for preliminary
injunction. Those facts are not repeated here.
Unitek appealed this Court’s September 30 order, and this matter was stayed,
at Unitek’s request, pending appeal. Dkt. No. 211. On appeal, the Ninth Circuit
affirmed. Dkt. No. 213.
Unitek now moves for voluntary dismissal pursuant to Fed. R. Civ. P.
41(a)(2). Unitek seeks dismissal with prejudice of its trademark infringement
claims (Unitek Counts 2–5) and, consequently, Chrysler’s infringement claim (a
portion of Chrysler Counterclaim 1). Unitek also seeks to dismiss without prejudice
its registration validity claim (Unitek Count 1) and the corollary cancellation claim
asserted by Chrysler (Chrysler Counterclaim 2 and a portion of Counterclaim 1), so
that those claims may be adjudicated in the cancellation proceeding before the
TTAB that was previously stayed following the filing of the complaint in this action.
2
STANDARD OF REVIEW
Rule 41(a)(1) of the Federal Rules of Civil Procedure permits a plaintiff to
dismiss an action without a court order by filing a notice of dismissal before the
opposing party serves either an answer or a motion for summary judgment. When,
as is the case here, an opposing party has served an answer, a plaintiff may
voluntarily dismiss an action only by court order:
Except as provided in Rule 41(a)(1), an action may be dismissed at the
plaintiff’s request only by court order, on terms that the court considers
proper. If a defendant has pleaded a counterclaim before being served
with the plaintiff’s motion to dismiss, the action may be dismissed over
the defendant’s objection only if the counterclaim can remain pending
for independent adjudication.
Fed. R. Civ. P. 41(a)(2). “A motion for voluntary dismissal under Rule 41(a)(2) is
addressed to the district court’s sound discretion . . . .” Stevedoring Servs. of Am. v.
Armilla Int’l B.V., 889 F.2d 919, 921 (9th Cir. 1989). “The purpose of the rule is to
permit a plaintiff to dismiss an action without prejudice so long as the defendant will
not be prejudiced, or unfairly affected by dismissal.” Id. (internal citation omitted).
“[W]hen ruling upon a Rule 41(a)(2) motion to dismiss without prejudice, the
district court must first determine whether the opposing party will suffer resultant
legal prejudice.” BlueEarth Biofuels, LLC v. Hawaiian Elec. Co., Inc., 2011 WL
2938512, at *2 (D. Haw. July 18, 2011); see Smith v. Lenches, 263 F.3d 972, 975
3
(9th Cir. 2001) (“A district court should grant a motion for voluntary dismissal under
Rule 41(a)(2) unless a defendant can show that it will suffer some plain legal
prejudice as a result.” (internal citation omitted)). Legal prejudice is “‘prejudice to
some legal interest, some legal claim, [or] some legal argument.’” Smith, 263 F.3d
at 976 (quoting Westlands Water Dist. v. United States, 100 F.3d 94, 97 (9th Cir.
1996)). “Uncertainty because a dispute remains unresolved” or “the threat of future
litigation which causes uncertainty” does not constitute legal prejudice. Westlands
Water Dist., 100 F.3d at 96–97. “Also, plain legal prejudice does not result merely
because the defendant will be inconvenienced by having to defend in another forum
or where a plaintiff would gain a tactical advantage by that dismissal.” Smith, 263
F.3d at 976.
DISCUSSION
The Court grants Unitek’s motion for voluntary dismissal: Unitek Count 1 is
dismissed without prejudice and Unitek Counts 2–5 are dismissed with prejudice.
The Court also dismisses with prejudice the portion of Chrysler’s Counterclaim 1
that seeks declaratory relief related to infringement because that claim is mooted by
the dismissal of Unitek Counts 2-5.
Consistent with Rule 41(a)(2), the Court finds that Chrysler’s remaining
registration/cancellation counterclaims (i.e., a portion of Counterclaim 1 and all of
4
Counterclaim 2) can remain pending for independent adjudication by this Court.
Those remaining counterclaims, however, are dismissed without prejudice under the
doctrine of primary jurisdiction. The remaining counterclaims, together with Unitek
Count 1, are more appropriately and efficiently adjudicated by the TTAB, in part,
because they do not involve any infringement-related determination, because
discovery taken in this proceeding may generally be used before the TTAB, because
registration and cancellation issues are at the core of the TTAB’s expertise, and
because the registration amendment contemplated by Unitek, which in itself could
narrow the range of remaining issues in dispute, may only be accomplished before
the TTAB.
As a threshold matter, the Court determines that Chrysler’s counterclaims
could remain pending if the Court granted the motion for voluntary dismissal of
Unitek’s claims. As noted above, Rule 41(a)(2) permits dismissal even though a
counterclaim has been filed where the counterclaim can remain pending for
independent adjudication by the court. Thus, the initial question before this Court
before deciding on dismissal of Unitek’s claims is whether Chrysler’s counterclaims
can remain pending if the Court were to dismiss Unitek’s claims. “If the answer is
yes, then the Court may proceed to determine whether [Unitek] should be permitted
to dismiss the action. On the other hand, if the counterclaim cannot exist alone, the
5
Court is precluded from allowing the action to be dismissed.” Hinfin Realty Corp. v.
Pittston Co., 206 F.R.D. 350, 354 (E.D.N.Y. 2002). In determining if a
counterclaim can remain pending:
a plaintiff may not dismiss an action when the dismissal would destroy
federal jurisdiction and prevent the court from adjudicating the
defendant’s counterclaim. However, when there is an independent
jurisdictional basis for the counterclaim, Rule 41 does not prohibit
dismissal of the underlying complaint. Similarly, the pendency of a
compulsory counterclaim will not defeat dismissal, since the court may
retain jurisdiction over a compulsory counterclaim under Rule 13 so
long as it had subject matter jurisdiction over the main claim.
Eberhard Inv. Assoc., Inc. v. Santino, 2004 WL 594728, at *2 (S.D.N.Y. Mar. 25,
2004) (quoting 8 James Wm. Moore, Moore’s Federal Practice, § 41.40[8][a] (3d
ed. 1997); see 9 Wright & Miller, Federal Practice and Procedure, § 2365 (3d ed.)
(“The rule prohibits dismissal when the counterclaim lacks independent grounds of
jurisdiction . . . .”).
There are independent jurisdictional grounds for both of Chrysler’s
counterclaims. The Court has federal question subject matter jurisdiction both for
Chrysler’s counterclaim under the Declaratory Judgments Act and the counterclaim
for cancellation of trademark under the Lanham Act. See Counterclaim ¶ 4
(asserting that “[t]his Court has jurisdiction over the subject matter of this action
under Section 39 of the Lanham Act, 15 U.S.C. § 1121, and 28 U.S.C. §§ 1331 and
6
1338). Indeed, Chrysler urged this Court, both in its briefing and at the hearing, that
the Court could dismiss Unitek’s complaint but retain jurisdiction over the
counterclaims, suggesting that Chrysler agrees that independent jurisdictional bases
for the counterclaims exist. The Court therefore determines that both counterclaims
could remain pending, even if Unitek’s claims are dismissed, and will determine
whether Unitek’s claims should be dismissed in the first instance.1
I.
Unitek’s Counts 2–5
Unitek seeks to dismiss all of its infringement-related claims (Counts 2–5)
with prejudice. Though Chrysler may have qualms with the disposal of its
counterclaims, Chrysler does not oppose the dismissal of Unitek’s infringement
claims with prejudice. Accordingly, the Court, in its discretion, concludes that
Unitek Counts 2–5 should be dismissed with prejudice and grants Unitek’s motion
to that effect.
II.
Unitek’s Count 1
Unitek seeks to dismiss without prejudice its Count 1—asserting that its
registration is valid—so that Unitek may pursue that claim in opposing the
cancellation proceeding brought by Chrysler before the TTAB, and so that Unitek
1
Although Unitek also moves to dismiss Chrysler’s counterclaims as part of its motion for
voluntary dismissal, Rule 41 is not a vehicle to dismiss counterclaims asserted by another party.
However, the Court will sua sponte dismiss the counterclaims for the reasons described below.
7
may seek amendment of its own registration. Because Unitek seeks dismissal of this
claim without prejudice, the Court determines whether Chrysler will suffer legal
prejudice as a result of such dismissal. BlueEarth Biofuels, LLC v. Hawaiian Elec.
Co., Inc., 2011 WL 2938512, at *2 (D. Haw. July 18, 2011).
“In determining whether dismissal without prejudice is appropriate, district
courts in this circuit have considered the following factors: (1) the opposing party’s
effort and expense in preparing for trial; (2) excessive delay and lack of diligence by
the moving party in prosecuting the action; (3) insufficient explanation of the need
for dismissal; and (4) the fact that the opposing party has moved for summary
judgment.” Beckett v. MACYSDSNB, 2012 WL 479593, at *2 (N.D. Cal. Feb. 14,
2012) (citing cases). Although Chrysler does not argue that it will be prejudiced
directly as a result of a dismissal without prejudice of Unitek Count 1, Chrysler does
argue that it will be prejudiced by dismissal of its own corollary cancellation claims.
The Court will therefore consider those same arguments of legal prejudice in
determining dismissal of Unitek Count 1.
Chrysler offers that it has expended considerable effort and expense into
developing the record in this case, the results of which are not automatically
transferable to the TTAB and which therefore may require duplication. TTAB
8
regulations, however, provide that, among other things, the following is evidence in
proceedings before the TTAB:
Testimony from other proceedings. By order of the Trademark Trial
and Appeal Board, on motion, testimony taken in another proceeding,
or testimony taken in a suit or action in a court, between the same
parties or those in privity may be used in a proceeding, so far as
relevant and material, subject, however, to the right of any adverse
party to recall or demand the recall for examination or
cross-examination of any witness whose prior testimony has been
offered and to rebut the testimony.
37 C.F.R. § 2.122(f). Accordingly, the Court sees no reason why Chrysler would not
be able to rely on the deposition testimony that came out of this action, as well as the
record of live testimony at the preliminary injunction hearing, to the same extent that
it could if proceedings here continued unabated. The Court recognizes that
document evidence from this case may not be automatically admissible before the
TTAB. However, most of the evidence before this Court related to the parties’
infringement claims, which claims, as a result of this order, will not be a part of the
TTAB or any other proceeding. Therefore, the Court is not convinced that
proceeding before the TTAB will burden Chrysler with duplicative efforts at
obtaining evidence. In weighing Chrysler’s effort and expense in preparing its case
here, the Court concludes that this factor is neutral because most of the fruits of that
effort and expense should be transferable to the TTAB proceeding.
9
The remaining three factors to consider in dismissing Unitek Count 1 without
prejudice—excessive delay and lack of diligence by the moving party in prosecuting
the action, insufficient explanation of the need for dismissal, and the fact that the
opposing party has moved for summary judgment—all counsel in favor of dismissal.
There is no evidence of excessive delay or lack of diligence by Unitek in prosecuting
the matter before this Court, and Chrysler does not argue that there is. Unitek’s
explanation of the need for dismissal—that it desires to avoid further litigation costs
and that it seeks amendment of its registration, which it can only seek before the
TTAB—is also sufficient. Finally, no motion for summary judgment has been filed
by anyone.
Because it does not appear that Chrysler will suffer legal prejudice as a result
of the dismissal of Unitek Count 1, the Court grants Unitek’s motion to dismiss
Unitek Count 1 without prejudice.
III.
Chrysler’s Infringement Counterclaim (Part of Counterclaim 1)
Having granted the motion for voluntary dismissal of all of Unitek’s claims,
the Court now turns to the question of how to proceed with Chrysler’s
10
counterclaims.2 Chrysler’s Counterclaim 1 seeks, in part, declaratory relief that
Chrysler has not infringed on Unitek’s trademark:
Chrysler denies that it has infringed or that its use of the ECODIESEL
and Design Mark in connection with its vehicles will ever infringe or in
any way violate Unitek’s purported rights in its putative mark
ECODIESEL.
Counterclaim (Dkt. No. 13) ¶ 21; see id. ¶ 25 (“Chrysler is entitled to a declaration
by this Court that . . . Chrysler’s ECODIESEL and Design Mark does not infringe,
dilute, or otherwise violate Unitek’s purported rights.”). The Court will address this
infringement portion of Counterclaim 1 first.
In light of the dismissal with prejudice of all of Unitek’s infringement claims,
the Court concludes that Chrysler’s infringement counterclaim is now moot. In
other words, dismissal with prejudice of all of Unitek’s infringement claims is
tantamount to the declaration that Chrysler seeks in the infringement portion of
Counterclaim 1. Accordingly, the infringement portion of Chrysler’s Counterclaim
1 is dismissed with prejudice as moot.
2
Although Chrysler makes arguments to show legal prejudice that it asserts should instruct against
dismissal of its counterclaims, the question of legal prejudice (i.e., the examination conducted in
deciding whether to permit dismissal under Rule 41(a)(2)) is not applicable to the counterclaims.
As Chrysler itself argued (and as the Court noted above), Rule 41(a)(2) is a vehicle for Unitek to
seek dismissal of its own claims. “Rule 41(a)(2) neither preclude[s] nor require[s] dismissal of the
counterclaim since it c[an] remain pending for independent adjudication.” McGraw-Edison Co. v.
Preformed Line Products Co., 362 F.2d 339, 342 n.3 (9th Cir. 1966).
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IV.
Chrysler’s Cancellation Counterclaims (Part of Counterclaim 1 and all
of Counterclaim 2)
The remaining portion of Chrysler’s Counterclaim 1 seeks declaratory relief
that Unitek’s ECODIESEL mark is not protectable:
Unitek’s putative mark ECODIESEL is not protectable because
a. Unitek has failed to use ECODIESEL as a trademark, in
connection with the goods for which it claims rights;
b. The putative mark ECODIESEL is merely descriptive, is not
inherently distinctive, and Unitek has failed to establish any
secondary meaning in the putative mark; and
c. Unitek has abandoned any rights it may have had by
discontinuing use of the putative mark ECODIESEL.
Counterclaim ¶ 22; see id. ¶ 25 (“Chrysler is entitled to a declaration by this Court
that . . . Unitek cannot and does not have any protectable trademark rights in the
putative mark ECODIESEL.”). Chrysler’s Counterclaim 2 similarly alleges (but
with more detail) that:
Because Unitek is not entitled to maintain any rights to the putative
mark ECODIESEL, including those rights accompanying a federal
registration, the Court should issue appropriate orders pursuant to 15
U.S.C. § 1119 directing the Director of the United States Patent and
Trademark Office to cancel U.S. Registration No. 3,166,981.
Counterclaim ¶ 30. Thus, a portion of Counterclaim 1, and Counterclaim 2, both
challenge the validity and protectability of Unitek’s trademark in the first instance,
and whether a mark found to be valid should nonetheless be canceled in the second.
12
The Court concludes, in consideration of the principles of primary
jurisdiction, that the questions raised by the cancellation portion of Counterclaim 1
and all of Counterclaim 2 (the “cancellation counterclaims”) should be decided in
the cancellation proceeding before the TTAB. Consequently, the Court dismisses
the cancellation counterclaims without prejudice so that they may be adjudicated
before the TTAB, together with Unitek Count 1.
“Primary jurisdiction is not a doctrine that implicates the subject matter
jurisdiction of the federal courts. Rather, it is a prudential doctrine under which
courts may, under appropriate circumstances, determine that the initial
decisionmaking responsibility should be performed by the relevant agency rather
than the courts.” Syntek Semiconductor Co., Ltd. V. Microchip Tech., Inc., 307 F.3d
775, 780 (9th Cir. 2002).3 In the context of applying primary jurisdiction to
trademark litigation, “where . . . there is a potential infringement lawsuit, federal
courts are particularly well-suited to handle the claims so that parties may quickly
obtain a determination of their rights without accruing potential damages.” Rhoades
v. Avon Prod., Inc., 504 F.3d 1151, 1164 (9th Cir. 2007). Thus, primary jurisdiction
principles do not counsel in favor of deferring to the TTAB where potential
3
Although the parties did not raise the question of primary jurisdiction in discussing dismissal of
the claims or counterclaims, this Court may raise it sua sponte. Syntek, 307 F.3d at 780 n.2.
13
infringement claims are involved. However, where infringement claims are not part
of the claims to be adjudicated, the Ninth Circuit explains that:
We agree with the Second Circuit that some situations might justify
deferring a declaratory judgment case when related TTAB proceedings
are pending; specifically, where the district court action involves only
the issue of whether a mark is entitled to registration, it might make
more sense to resolve the registration claims at the TTAB first. On the
other hand, if, as here, a potential infringement claim requires the
district court to resolve much or all of the registration issues, it would
waste everyone’s time not to settle the registration issue now, in district
court. The deciding factor should be efficiency; the district court
should exercise jurisdiction if this course is more efficient; otherwise,
not.
Id. at 1165 (internal quotation marks, citations, and alterations omitted). Stated
otherwise, in analyzing principles of primary jurisdiction and considering whether to
exercise jurisdiction in a trademark case or defer to the TTAB for adjudication, this
court should consider: (1) whether the action potentially involves infringement
claims or, alternatively, only registration-related claims; and (2) which venue would
more efficiently resolve the claims. Id.
In applying the considerations laid out in Rhoades, the Court concludes that
the circumstances of the case at this juncture counsel for deferral to the TTAB to
decide the cancellation claims (the only remaining claims in this case). First, as a
result of the dismissal of all of the infringement-related claims with prejudice, this
case only involves issues concerning the validity of Unitek’s ECODIESEL mark.
14
There is no possibility of Unitek asserting any infringement claims against
Chrysler.4 Thus, as the Ninth Circuit stated in Rhoades:
[i]f a district court action involves only the issue of whether a mark is
entitled to registration and if subject matter jurisdiction is available, the
doctrine of primary jurisdiction might well be applicable, despite the
differences between the trademark registration scheme and other
regulatory patterns. In such a case, the benefits of awaiting the decision
of the [PTO] would rarely, if ever, be outweighed by the litigants’ need
for prompt adjudication. But where . . . a district court suit concerns
infringement, the interest in prompt adjudication far outweighs the
value of having the views of the PTO.
Id. at 1163 (quoting Goya Foods, Inc. v. Tropicana Prod., Inc., 846 F.2d 848, 853–
54 (2d Cir. 1988)). Registration and cancellation issues, the only ones remaining
here, are among those that the TTAB was designed to adjudicate. 15 U.S.C. § 1067
(“In every . . . application to cancel the registration of a mark, the Director shall give
notice to all parties and shall direct a Trademark Trial and Appeal Board to
4
At the hearing, Chrysler asserted that, as part of its Counterclaim 1, Chrysler was seeking a
declaration as to Unitek’s common law trademark rights, in addition to Unitek’s registration rights,
and thus the cancellation counterclaims included substantive questions that exceeded what could
be adjudicated by the TTAB. See Counterclaim ¶ 25 (“Chrysler is entitled to a declaration by this
Court that . . . Unitek cannot and does not have any protectable trademark rights in the putative
mark ECODIESEL.”). What Chrysler did not note, however, is that the Court, without dispute
from either Unitek or Chrysler, has now dismissed with prejudice Unitek Count 4. That count
specifically asserted a claim for common law trademark infringement. First Amended Complaint
¶¶ 52–56. With that claim now dismissed with prejudice, it is not possible that Unitek will raise
any common law claim for infringement against Chrysler. As such, any request by Chrysler for a
declaration that Unitek does not have protectable common law trademark rights as to Chrysler is
now moot.
15
determine and decide the respective rights of registration.”); see Realty Experts Inc.
v. RE Experts Inc., 2012 WL 699512, at *2 (S.D. Cal. Mar. 1, 2012) (“PTO’s
Trademark Trial and Appeal Board . . . has been established ‘to determine and
decide the respective rights of registration’ in contested proceedings.” (quoting 15
U.S.C. § 1067)). This consideration of primary jurisdiction thus weighs in favor of
deferring to the TTAB.
Second, the Court concludes that proceeding with the cancellation claims
before the TTAB would be more efficient than litigating the cancellation claims in
this Court. The cancellation proceeding currently pending before the TTAB
preceded this matter, and was stayed when Unitek initiated this case. Thus, the
parties need only seek a lift of the stay in order to resume before the TTAB.5
Further, Unitek wishes to amend its registration in an effort to narrow, and possibly
avoid, the registration dispute before the TTAB. The parties agree that the
registration amendment, if Unitek is permitted to so amend, could only occur before
5
Even if, as Chrysler argued at the hearing, the proceeding before the TTAB may take a few more
months to conclude than the matter before this Court might, “‘the benefits of awaiting the decision
of the [PTO] would rarely, if ever, be outweighed by the litigants’ need for prompt adjudication.’”
Rhoades, 504 F.3d at 1163 (quoting Goya Foods, Inc. v. Tropicana Prod., Inc., 846 F.2d 848, 853–
54 (2d Cir. 1988)).
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the agency, and not before this Court.6 In addition, as noted above, TTAB
procedures permit the use of at least most of the discovery taken in the instant action
as evidence before the TTAB. Accordingly, the Court concludes that the TTAB is
better equipped to decide the cancellation counterclaims.7 See, e.g., Realty Experts,
2012 WL 699512, at *2–4 (applying the considerations laid out in Rhoades and
concluding that primary jurisdiction applied to allow the TTAB to adjudicate claims
of eligibility for registration).
V.
Attorneys’ Fees
The parties agree that in trademark litigation cases, “[t]he court in exceptional
cases may award reasonable attorney fees to the prevailing party.” 15 U.S.C.
§ 1117. “‘When a plaintiff’s case is groundless, unreasonable, vexatious, or pursued
in bad faith, it is exceptional, and the district court may award attorney’s fees to the
defendant.’” Stephen W. Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821, 827 (9th
6
Although Chrysler agrees that amendment of a registration can only occur with the PTO, Chrysler
asserts that Unitek is not entitled to amendment because it has not used its mark in interstate
commerce. This argument, however, goes to the merits of Chrysler’s cancellation counterclaims
and addresses a question that the TTAB is well-equipped to decide. The Court will not address
whether Unitek has used its mark in interstate commerce in connection with any of the goods listed
in its registration. In fact, after the hearing, Unitek filed an ex parte motion for leave to file a
sur-reply that addresses the issue of Unitek’s use of its mark in interstate commerce. Dkt. No. 237.
Because the Court does not reach this issue and defers it (as part of the cancellation counterclaims)
to the TTAB, Unitek’s ex parte motion is denied as moot.
7
These same considerations counsel in favor of deferring to the TTAB to decide Unitek Count 1.
17
Cir. 1997) (quoting Scott Fetzer Co. v. Williamson, 101 F.3d 549 (8th Cir. 1996)).
“Under the Lanham Act, an award of attorney’s fees is within the district court’s
discretion.” Id. at 825.
Chrysler has failed to demonstrate that this case is an exceptional one within
the meaning of Section 1117. The fact that Unitek filed this action, chose to move
for a preliminary injunction, and then appealed this Court’s order denying that
motion does not illustrate that Unitek’s claims were groundless, unreasonable, or
pursued in bad faith. In fact, the Court’s preliminary injunction order illustrates that
Unitek’s claims were far from groundless, and required a deliberate balancing of the
relevant factors. In addition, Unitek moved for a stay pending appeal in order to
reduce unnecessary litigation, which is contrary to any assertion that Unitek sought
to prolong this action.
Because this is not an exceptional Lanham Act case, the Court declines to
award attorneys’ fees to Chrysler.
CONCLUSION
Unitek’s motion for voluntary dismissal is hereby GRANTED. Unitek Count
1 is dismissed without prejudice. Unitek Counts 2–5 are dismissed with prejudice.
As a result of the dismissal of Unitek’s claims, the infringement portion of
Chrysler’s Counterclaim 1 is dismissed with prejudice as moot. Finally, the
18
cancellation portion of Counterclaim 1 and all of Counterclaim 2 are dismissed
without prejudice.
IT IS SO ORDERED.
DATED: October 31, 2014 at Honolulu, Hawai‘i.
Unitek Solvent Services, Inc. v. Chrysler Group LLC; CV 12-00704 DKW/RLP;
ORDER GRANTING PLAINTIFF’S MOTION FOR VOLUNTARY DISMISSAL
AND DISMISSING DEFENDANT’S COUNTERCLAIMS
19
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