Franek v. Walmart Stores, Inc. et al

Filing 16

STATUS Report by Clemens Franek (Roth, Mark)

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UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION CLEMENS FRANEK, Plaintiff, v. WALMART STORES, INC. and TARGET CORPORATION, Defendants. Civil Action No. 08-cv-0058 Judge Robert M. Dow Jr.

Joint Initial Status Report Plaintiff, Clemens Franek, and Defendants, Wal-Mart Stores, Inc. and Target Corporation, respectfully submit the following Joint Initial Status Report pursuant to the Court's Order dated January 28, 2008 (See Docket No. 5) and the Court's Standing Order. I. The Nature of the Case A. Attorneys of record

Plaintiff's attorney: Mark D. Roth Orum & Roth LLC 53 West Jackson Boulevard, Suite 1616 Chicago, IL 60604-3606 Mr. Roth will try the case for Plaintiff. Wal-Mart Stores, Inc.'s attorneys: David A. Roodman Bryan Cave LLP One Metropolitan Square, Suite 3600 St. Louis, MO 63102-2750

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Mark A. Paskar Jena M. Valdetero Bryan Cave LLP 161 North Clark Street, Suite 4300 Chicago, Illinois 60601-3315 Mr. Roodman and/or other attorneys from the law firm of Bryan Cave LLP are expected to try the case for Wal-Mart Stores, Inc. Target Corporation's attorneys: Larry L. Saret Arthur Gollwitzer III Gilberto Espinoza MICHAEL BEST & FRIEDRICH LLP Two Prudential Plaza 180 N. Stetson Ave., Ste 2000 Chicago, IL 60601 312-222-0800 Mr. Gollwitzer and attorneys from Faegre & Benson in Minneapolis, Minnesota are expected to try the case for Target Corporation. Defendants Target and Wal-Mart are entitled to indemnification from their vendor Jay Franco & Sons, Inc. Defendants understand that Jay Franco & Sons, Inc. is considering intervening or otherwise becoming involved in this matter. B. Basis for Federal Jurisdiction

The Complaint states that federal question jurisdiction exists pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338. It further states that jurisdiction over the state law claims exists pursuant to 28 U.S.C. § 1367. C. Nature of the claims asserted in the Complaint

Plaintiff alleges that he is the owner of a registered United States Trademark for a round shaped beach towel. Plaintiff alleges that both Defendants have sold round beach

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towels and therefore purportedly infringed Plaintiff's mark. Plaintiff has filed an action for violations of the Lanham Act and state unfair competition based on Defendants' alleged sales of round beach towels. Defendants deny infringement and liability. No Answers or counterclaims have been filed as of the date of this Report, but Defendants expect to deny all material allegations and, at least, assert counterclaims seeking a declaration that Plaintiff's trademark registration is invalid and should be cancelled. Defendants also expect to deny all liability and assert a number of affirmative defenses to the Complaint. D. Parties not served

All parties have been served or waived service. E. and F. Principal legal and factual issues

Plaintiff contends that the factual and legal issues in this case are whether Defendants sold towels that infringed Plaintiff's trademark and whether and to what extent Plaintiff has been damaged. Defendants contend that the primary legal and factual issues in this case are: · · · · · · · The existence and validity of Plaintiff's purported trademark rights Whether there is/was any likelihood of confusion Plaintiff's laches, acquiescence and estoppel The functionality of the purported trademark The statute of limitations The existence of any damages and the amount The lack of irreparable harm or other basis for injunctive relief

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·

Whether Defendants have made any actionable "trademark use" of the asserted mark

·

Whether Plaintiff has abandoned any rights that it may have in the asserted mark for failure, since the mid-1980s, to enforce any of its alleged rights against third parties

G.

Jury trial

Plaintiff has demanded a jury trial. H. Discovery

No discovery has been taken to date. The parties anticipate using all permissible discovery methods. The parties propose exchanging Rule 26(a)(1) disclosures by March 26, 2008. The parties propose that all fact discovery be completed by December 12, 2008. The parties propose the following expert discovery schedule: Opening expert reports are due January 16, 2009. This means that the party bearing the burden of proof on issues for which it proffers expert testimony must submit a report or reports on those issues by this time. Rebuttal expert reports are due by March 6, 2009. Expert discovery will be completed by April 3, 2009. I. Trial date and length of trial

The parties estimate that a trial of this matter will take approximately 5 days. The parties propose being ready for trial by September 14, 2009. J. Proceeding before a Magistrate Judge

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The parties do not consent unanimously to proceed before a Magistrate Judge at this time. K. and L. Status of settlement discussions and settlement conference.

Settlement discussions have occurred in the past, but not among present counsel. Plaintiff and Defendant Wal-Mart Stores, Inc. have agreed to take part in the Court's Lanham Act mediation program and Target Corporation is currently considering whether it will take part in this program. The parties are also considering whether to request a settlement conference with a Magistrate Judge.

Dated: February 27, 2008

Mark D. Roth [e-mail] Orum & Roth LLC 53 West Jackson Boulevard, Suite 1616 Chicago, IL 60604-3606 Tel.: [phone] Fax: [phone] Attorney for Plaintiff

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David A. Roodman [e-mail] Bryan Cave LLP One Metropolitan Square, Suite 3600 St. Louis, MO 63102-2750 Tel.: [phone] Fax: [phone] Mark A. Paskar [e-mail] Jena M. Valdetero [e-mail] Bryan Cave LLP 161 North Clark Street, Suite 4300 Chicago, Illinois 60601-3315 Tel.: [phone] Fax: [phone] Attorneys for Defendant Walmart Stores, Inc.

Larry L. Saret [e-mail] Arthur Gollwitzer III [e-mail] Gilberto Espinoza [e-mail] MICHAEL BEST & FRIEDRICH LLP Two Prudential Plaza 180 N. Stetson Ave., Ste 2000 Chicago, IL 60601 Tel.: [phone] Fax: [phone] Attorneys for Defendant Target Corporation

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