Bodum USA, Inc. v. A Top New Casting Inc.

Filing 34

MEMORANDUM OPINION AND ORDER signed by the Honorable Matthew F. Kennelly on 8/22/2016: For the stated in the accompanying Memorandum Opinion and Order, the Court grants Bodums to dismiss A Top's counterclaim [dkt. no. 16]. (mk)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

Bodum USA, Inc.,

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Plaintiff,
vs.
A Top New Casting Inc.,
Defendant.

Case No. 16 C 2916

MEMORANDUM OPINION AND ORDER
MATTHEW F. KENNELLY, District Judge:
Bodum USA, Inc., (“Bodum”) has sued A Top New Casting Inc., (“A Top”) for
trade dress infringement. Bodum alleges that A Top infringed Bodum’s CHAMBORD®
trade dress. Bodum asserts claims for violation of the Lanham Act, 15 U.S.C. § 1125(a)
(Count 1), common law unfair competition (Count 2), and violation of the Illinois
Deceptive Trade Practice Act (Count 3). In response, A Top has filed a two-count
counterclaim, seeking a declaratory judgment of invalidity, unenforceability, or
noninfringement of Bodum's trade dress. Bodum has moved to dismiss the
counterclaim under Federal Rule of Civil Procedure 12(b)(6). For the following reasons,
the Court grants Bodum’s motion.
Background
The Court starts with the basic background allegations in Bodum's complaint.
Bodum sells designer specialty housewares, including nonelectric French press
coffeemakers under the federally registered trademark CHAMBORD®. Bodum’s

CHAMBORD® coffeemaker has a unique appearance that, Bodum alleges, consumers
recognize as originating from Bodum. The metallic stand, handle design, and domeshaped lid are some examples of what Bodum cites as CHAMBORD’s® allegedly
distinctive characteristics.
A Top sells and promotes household goods, including nonelectric coffeemakers,
throughout the United States.

Bodum alleges in its complaint that A Top promoted and

advertised a nonelectric French press coffeemaker, the SterlingPro French Coffee
Press, that looks confusingly similar to Bodum’s CHAMBORD® coffeemaker. Bodum
alleges that A Top deliberately adopted a confusingly similar design to capitalize on
Bodum’s goodwill. As indicated earlier, Bodum asserts claims of trade dress
infringement, unfair competition, and violation of the Illinois Uniform Deceptive Trade
Practices Act.
A Top has filed a two-count counterclaim against Bodum. In count one, A Top
asks for a declaratory judgment that Bodum's trade dress is invalid and unenforceable.
In count two, A Top asks for a declaratory judgment that it has not infringed any of
Bodum’s trade dress rights. Bodum has moved to dismiss the counterclaim under Rule
12(b)(6).
Discussion
Bodum argues that A Top’s counterclaim should be dismissed because it
essentially is nothing more than the mirror image of Bodum's claims that A Top infringed
a valid trade dress. Bodum argues that adjudication of Bodum’s claims alone will
resolve the parties' dispute and that the counterclaim adds nothing to the case.
The purpose of a declaratory judgment is to "clarify [ ] and settl[e] the legal

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relations at issue" and to "terminate and afford relief from the uncertainty, insecurity,
and controversy giving rise to the proceeding." Tempco Elec. Heater Corp. v. Omega
Eng'g, Inc., 819 F.2d 746, 749 (7th Cir. 1987). "It is well settled that the federal courts
have discretion to decline to hear a declaratory judgment action, even though it is within
their jurisdiction." Id. at 747. "Where the substantive suit would resolve the issues
raised by the declaratory judgment action, the declaratory judgment action 'serve[s] no
useful purpose" because the controversy has 'ripened' and the uncertainty and
anticipation of litigation are alleviated." Amari v. Radio Spirits, Inc., 219 F. Supp. 2d
942, 944 (N.D. Ill. 2002) (quoting Tempco, 819 F.2d at 749).
A declaratory judgment may be refused if "it is being sought merely to determine
issues which are involved in a case already pending and can be properly disposed of
therein." Yellow Cab Co. v. City of Chicago, 186 F.2d 946, 950 (7th Cir. 1951). That is
the case here. A Top's counterclaim essentially presents nothing more than the flip side
of Bodum's claims. The counterclaim adds nothing to the case beyond the issues that
Bodum's claims call upon the Court to adjudicate.
A Top argues that the counterclaim should not be dismissed because it involves
a dispute that will remain alive even after Bodum’s claims are disposed of. For
example, A Top argues, if the Court rules that A Top has not infringed Bodum's trade
dress, the issue of the validity of that trade dress will remain unadjudicated absent the
counterclaim. Conversely, if the Court finds Bodum's trade dress invalid or
unenforceable, the issue of infringement will not necessarily be adjudicated through
Bodum’s claims. Either way, A Top argues, it may remain vulnerable to future litigation
relating to Bodum's trade dress.

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The problem with A Top's argument is that a finding in its favor on either
infringement or validity will end the parties' present dispute, which is the only
controversy properly before the Court. The theoretical possibility of a future controversy
involving Bodum's trade dress and some other A Top product does not change things.
In this regard, A Top is essentially seeking an inappropriate advisory opinion, that is, "a
decision that does not resolve an actual case or controversy." People of State of Ill. ex
rel. Barra v. Archer Daniels Midland Co., 704 F.2d 935, 941 (7th Cir. 1983). Indeed, A
Top argues that the Court should find Bodum’s trade dress was invalid to preclude it
from claiming infringement against any of A Top’s future products or those of other
competitors. See Def.'s Opp’n to Pl.'s Mot. to Dismiss at 5. A Top may not, however,
obtain a declaratory judgment that "would merely determine a collateral legal issue
governing certain aspects of . . . pending or future suits." Calderon v. Ashmus, 523 U.S.
740, 747 (1998). "Rather than use the mark, get sued, and fight it out in court, [A Top
is] saying, 'We would like to use the mark, but before we do, we want a court to say we
may do so safely.'" Windsurfing Int'l Inc. v. AMF Inc., 828 F.2d 755, 758 (Fed. Cir.
1987). That would be an inappropriate advisory opinion.
In sum, A Top's counterclaim is the mirror image of Bodum's claim and is
therefore unnecessary. If there is more to the counterclaim than that, it seeks to obtain
an impermissible advisory opinion regarding potential future disputes.
Conclusion
The Court grants Bodum’s to dismiss A Top's counterclaim [dkt. no. 16].

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MATTHEW F. KENNELLY
United States District Judge

Date: August 22, 2016
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