TEANECK TAXI AND LIMOUSINE SERVICE INC. et al v AURA TRANSPORTATION, et al

Filing 11

REPORT AND RECOMMENDATIONS re 4 MOTION to Remand filed by KISMET INTERNATIONAL INC., TEANECK TAXI AND LIMOUSINE SERVICE INC., TEANECK CAB SERVICE INC Objections, if any, to R&R due by 5/1/2015. Signed by Magistrate Judge Steven C. Mannion on 4/17/2015. (nr, )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
NOT FOR PUBLICATION
TEANECK TAXI, et al,
Plaintiff,

Civil Action No.

v.

2:14-cv-05758(SDW-SCM)

AURA TRANPORTATION INC, et
al.,

ON PLAINTIFF’S MOTION TO
REMAND [D.E. 4]

Defendants.
REPORT AND RECOMMENDATION
STEVEN C. MANNION, UNITED STATES MAGISTRATE JUDGE
I.

INTRODUCTION
Before the Court is plaintiffs Teaneck Taxi and Limousine

Service

Inc.

and

Kismet

International

Inc.1

(“Plaintiffs’”)

Motion to Remand this case to the Superior Court of New Jersey,
Chancery

Division,

(“D.E.”)

4).

Bergen

Pursuant

County.

to

Local

(ECF
Civil

Docket

Rule

Entry

No.

72.1(a)(2),

the

Honorable Susan D. Wigenton, United States District Judge, has
referred the instant motion to the undersigned for report and
recommendation.

Having

considered

the

parties’

respective

submissions without oral arguments pursuant to Federal Rule of
Civil Procedure 78, and for the reasons set forth herein, it is

1

D/B/A Teaneck Taxi Service.

1

respectfully recommended that Plaintiffs’ Motion to Remand be
granted.

II.

BACKGROUND
On

August

5,

2014,

Plaintiffs

filed

a

thirty-one

count

verified Complaint in the Superior Court of New Jersey, Chancery
Division against defendants Aura Transportation, Inc., Mehmet E.
Tataroglu, Dursun Kurban, NJ Royal Car & Limo Service LLC, Mr.
Taxi LLC, Tati LLC, Tataroglu International LLC, and Adam Massa
(collectively

“Defendants”);

residents.

(D.E.

injunctive

relief

1-1,
and

all

Pl.’s

of

whom

Compl.).

asserted

infringement, dilution, deception,

common

are

New

Jersey

Plaintiffs

sought

law

trade

name

interference

with business

relations, and unfair competition by Defendants.

Id. at ¶¶55-

228.
Plaintiffs’ allege they have owned and operated a limousine
and taxi service in Teaneck, New Jersey and the surrounding area
since July 1998. (D.E. 1-1 Pl.’s Compl. ¶18). During the course
of their business, Plaintiffs used the trademark and trade name
“TEANECK TAXI” since July 27, 1998, which has been registered
with Bergen County since July 15, 1998 and September 18, 2003.
Id.

Plaintiff also used the trademark and trade name “TEANECK

LIMO” since March 1, 1997, which has been registered with the
2

United

States

Patent

October 15, 2013.

and

Trademark

Id. at ¶¶ 19-20.

Office

(“USPTO”)

since

Additionally, Plaintiffs

have used the name “TEANECK CAB” since December 20, 2002.
at ¶ 21.

Id.

As a basis for its’ Complaint, Plaintiffs further

allege that irrespective of Plaintiffs’ use and registration of
the aforementioned trademarks and trade names, defendants, some
of whom are former employees of Plaintiffs, opened taxi and
limousine services and established websites under various names,
including www.teanecktaxis.com and www.teanecklimo.com.

Id. at

¶¶ 28-54.
On

September

(“Defendant”)

15,

removed

2014,
this

Tataroglu

action

on

the

International
basis

of

LLC

federal

question asserting this action originated from Plaintiffs’ trade
name filing with the USPTO. (D.E. 1, Notice of Removal, ¶¶ 4-5).
The Notice of Removal was silent as to whether all defendants
consented to the removal of the action to the District Court.
On October 8, 2014, Plaintiffs moved to remand this action
to Superior Court of New Jersey, Chancery Division, arguing that
the district court lacks subject matter jurisdiction. (D.E. 4-3,
Pl’s Mot. To Remand).
Plaintiffs’ motion.

On October 16, 2014, Defendant opposed

(D.E. 6).

On October 24, 2014, Plaintiffs

replied to Defendant’s opposition.

3

(D.E. 7).

III.

LEGAL STANDARD
Pursuant to 28 U.S.C. § 1441(a), “any civil action brought

in a State court of which the district courts of the United
States

have

original

jurisdiction,

may

be

removed

by

the

defendant or the defendants, to the district court of the United
States.”

28 U.S.C. § 1441(a); see also Metro. Life Ins. Co. v.

Taylor, 481 U.S. 58, 63, 107 S. Ct. 152, 95 L. Ed 2d 55 (1987).
Since federal courts are of limited jurisdiction, actions can
only be removed to federal court pursuant to § 1441(a) if: the
action arises under the Constitution, laws or treaties of the
United States, providing a federal question; or if the matter in
controversy exceeds $75,000 and consists of a dispute between
citizens

of

different

states,

providing

diversity

of

citizenship. See 28 U.S.C. §§ 1331, 1332.
On a motion to remand, the party asserting jurisdiction
(the removing party) bears the burden of establishing that the
action is properly before the court.

Samuel-Bassett v. KIA

Motors Am., Inc., 357 F.3d 392, 396 (3d Cir. 2004).

Moreover,

removal statutes should be construed strictly against removal,
with all doubts resolved in favor of remand.

Id.; see also

Boyer v. Snap-On Tools Corp., 913 F.2d 108, 111 (3d Cir. 1990).

4

IV.

ANALYSIS
Plaintiffs

assert

remand

is

proper

because

absent

any

federal claims alleged in its’ complaint and absent diversity of
citizenship between the parties in this action, this Court lacks
subject

matter

jurisdiction.

(D.E.

4-4,

Pl.’s

Br.

at

7).

Plaintiffs also assert remand is appropriate because Defendant’s
removal was procedurally deficient in that not all defendants
joined in the removal.

Id. at 4.

Lastly, Plaintiffs request

attorneys’ fees for Defendant’s improper removal. Id. at 11-12.
Defendant

opposes

by

asserting

the

existence

of

Plaintiffs’

federally registered trademarks establishes a federal question
because resolution of this matter will require exploring the
validity of the aforementioned trademark through counterclaims
and defenses.

(D.E. 6, Def.’s Opp’n Br. at 1).

This Court finds that the federal trademark registration
alone does not establish a claim arising under federal question
where Plaintiffs specifically pled common law causes of action
and are not seeking relief under the Lanham Act, 15 U.S.C. 1051
et seq.

Unless a trademark claim arising under the Lanham Act

is present on the face of the complaint and absent diversity of
citizenship between the parties, a district court does not have
original subject matter jurisdiction over a matter. Caterpillar,
Inc. v. Williams, 482 U.S. 386, 392, 107 S. Ct. 2425, 96 L. Ed.
5

318 (1987). Thus, because the plaintiff is the “master of the
claim” the “well-pleaded complaint” rule permits the plaintiff
to avoid federal jurisdiction by exclusive reliance on state
law."
rule

Id.

However, an exception to the well-pleaded complaint

applies:

“(1)

when

it

appears

that

some

substantial,

disputed question of Federal law is a necessary element of one
of the well pleaded state claims or (2) when it appears that
plaintiff's claim is ‘really’ one of Federal law. This narrow
corollary

to

the

well-pleaded

complaint

rule

is

termed

the

complete preemption doctrine.” Gateway 2000 v. Cyrix Corp., 942
F. Supp. 985, 990 (D.N.J. 1996)(internal citations omitted).
In Gateway 2000 v. Cyrix Corp., the Court held that the
federal registration of a mark does not automatically convert
any claim brought in relation to that mark into a federal claim.
942 F. Supp. at 993.

That plaintiff filed a motion to remand

subsequent to the defendant’s removal of plaintiff’s action for
violations of state statutory and common law claims including
tortious

interference

interference

with

with

contractual

prospective

economic

relations,
advantage,

tortious
trademark

dilution, trademark infringement and unfair competition.
989.

Id. at

The defendant argued that where the complaint alleges no

federal claims, the presence of a federally registered trademark
defeats a state law claim allowing for removal of the case based
6

on federal question jurisdiction.

Id. at 988.

The Court stated

that:
According to the [defendant’s] argument, any
trademark that is federally registered or used
in interstate commerce would defeat a state law
claim and require removal to the Federal Court.
Indeed, adoption of [defendant’s] argument would
greatly frustrate the ability of state courts to
address acts such as those allegedly committed
by [defendant].
Id. at 992.
Similarly here, Plaintiffs also did not allege any federal
claims

in

Defendant’s

their
removal

Complaint.
of

this

(D.E.

matter

1-1,
was

Pl.’s

based

on

Compl.).
a

federal

question established by Plaintiffs’ federally registered trade
name, “TEANECK LIMO,” being the impetus of Plaintiffs’ complaint
and being inadvertently intertwined with Plaintiffs’ claim for
trademark infringement,

which deprived

Plaintiffs of choosing

between federal and state claims when filing a cause of action
involving any federally registered trade name. See Caterpillar,
Inc.,

482

U.S.

at

399

(D.E.

6,

Def.’s

Opp’n).

At

the

commencement of its action, Plaintiff was entitled to choose
whether

their

trademark

claims

were

violations

under

state

common law trademark infringement, state unfair competition law,
and/or federal trademark infringement law; Plaintiff chose to
seek relief under common law trade name infringement and state

7

unfair competition laws. (D.E. 1-1, Compl. at ¶¶ 55-228); See
also La Chemiste LaCoste v. Alligator Co., 506 F.2d 339, 345-46
(3rd Cir. 1974). Therefore, although Plaintiffs reference its
federal trade name “TEANECK LIMO” in its complaint, in addition
to its non-federally registered trade names, Plaintiff chose to
assert

state

and

common

law

causes

of

action

for

all

trade

names.
Next, the Court finds subject matter jurisdiction cannot be
established

through

Plaintiffs’

USPTO

Defendant’s

registrations

various

infringement

Federal

Court

on

challenge

claims.

the

basis

as
A

of

a

a

case

to

the

validity

of

defense

to

Plaintiffs’

cannot

be

removed

to

unless

the

federal

defense

plaintiff’s complaint establishes that the case arises under a
federal law. See Weinberg v. Sprint Corp., 165 F.R.D. 431, 436
(D.N.J. 1996); Trent Realty Assoc. v. First Fed. Sav. & Loan
Ass’n., 657 F.2d 29, 34-35 (3d Cir. 1981); Merrell Dow Pharm.
Inc. v. Thompson, 478 U.S. 804, 808, 106 S. Ct. 3229, 92 L. Ed.
2d

650

(1986).

“It

is

the

plaintiff

who

has

the

choice

of

claiming on state law only, or on state and federal law. The
defendant cannot make that choice for him by seeking to draw an
inference

or

implication

of

a

federal

claim

in

the

removal

petition.” 67 Goffle Rd., Inc. v. Playboy Hotel Casino, 527 F.
Supp. 566, 568-69 (D.N.J. 1981). Here, Plaintiffs chose to bring
8

common

law

trademark

infringement

claims

of

a

federally

registered trademark, thus, anticipating a federal defense in
response

to

Plaintiffs’

common

law

claims

is

not

enough

to

warrant federal subject matter jurisdiction.
The Court further finds Defendant’s Notice of Removal was
deficient and did not establish whether all defendants consented
to the removal.

28 U.S.C. § 1446(b)(2)(A) provides that “[w]hen

a civil action is removed solely under section 1441(a), all
defendants who have been properly joined and served must join in
or

consent

to

the

removal

of

the

action,”

Circuit refers to as the “unanimity rule.”

which

the

Third

Lewis v. Rego, 757

F.2d 66, 68 (3d Cir. 1985); Balazik v. County of Dauphin, 44
F.3d 209, 213 (3d Cir. 1995).

The rule of unanimity may be

disregarded when (1) a non-joining defendant is unknown or is a
nominal

party;

joined;

or

(2)

(3)

where

where

a

a

defendant

non-resident

has

been

defendant

fraudulently
has

not

been

served at the time the notice of removal is filed. Balazik, 44
F.3d at 213 n.4.
In

this

case,

the

removing

Defendant,

Tataroglu

International LLC’s Removal Notice was silent as to the consent
of the other Defendants in the action.

(D.E. 1, Notice of

Removal). Moreover, in their opposition to Plaintiffs’ Motion
for

Remand,

the

Defendant

failed
9

to

address

the

issue

of

consent.

(D.E.

submissions

6

on

Def.’s

their

Opp’n

face

Br.).

support

None
or

of

the

assert

parties’

any

of

the

exceptions to the unanimity rule. Thus, the removing Defendant’s
failure to obtain the consent of non-removing Defendants is a
procedural defect in the removal petition.
Lastly,

the

Court

recommends

attorneys’ fees be denied.
district

court

has

broad

Plaintiff’s

request

for

Pursuant to 28 U.S.C. § 1447, a
discretion

in

determining

whether

awarding attorneys’ fees incurred “as a result of [a] removal”
is appropriate.

See also Mints v. Educ. Testing Serv., 99 F.3d

1253, 1260 (3d Cir. 1996). However, when determining whether to
award attorneys’ fees in removal cases, the Supreme Court has
established that "the standard for awarding fees should turn on
the reasonableness of the removal. Absent unusual circumstances,
courts may award attorney's fees only where the removing party
lacked

an

objectively

reasonable

basis

for

seeking

removal.

Conversely, when an objectively reasonable basis exists, fees
should be denied." Martin v. Franklin Capital Corp., 546 U.S.
132, 141, 126 S.Ct. 704, 163 L. Ed. 2d 547 (2005).

Here, the

Court does not find Defendant lacked an “objectively reasonable
basis for seeking removal." See Martin, 546 U.S. at 141; see
also Christiansburg Garment Co. v. EEOC, 434 U.S. 412, 421, 98
S. Ct. 694, 54 L. Ed. 2d 648 (awarding fees simply because the
10

party

did

not

prevail

"could

discourage

all

but

the

most

airtight claims, for seldom can a party be sure of ultimate
success").

V.

CONCLUSION
Based

Complaint

on

the

being

foregoing

devoid

of

and

a

in

cause

of

light
action

of

Plaintiffs’

arising

under

federal law, the lack of diversity, and no evidence of consent
from all Defendants, or an applicable exception to the unanimity
rule, this Court concludes it lacks subject matter jurisdiction
over this matter.

Therefore, pursuant to 28 U.S.C. § 1441, it

is the recommendation of the undersigned that Plaintiff’s Motion
to Remand, (D.E. 4),

be

GRANTED

and Plaintiffs’ request for

attorneys’ fees and costs be DENIED.
The parties have fourteen days to file and serve objections
to this Report and Recommendation pursuant to 28 U.S.C. § 636
and Local Civil Rule 72.1(c)(2).

4/17/2015 1:10:02 PM

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