Epic Systems Corporation v. Yourcareuniverse, Inc. et al

Filing 46

OPINION and ORDER denying 21 Motion to Stay. Signed by District Judge Barbara B. Crabb on 3/4/2016. (kwf)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - EPIC SYSTEMS CORPORATION,
OPINION AND ORDER
Plaintiff,
15-cv-821-bbc
v.
YOURCAREUNIVERSE, INC.,MEDHOST, INC.
and MEDHOST SOLUTIONS CORP.,
Defendants.
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Plaintiff Epic Systems Corporation is suing defendants Yourcareuniverse, Inc.,
Medhost, Inc. and Medhost Solutions Corp. for trademark infringement.

Defendant

Yourcareuniverse, Inc. has filed a motion to stay the lawsuit, but only as to the claims
against Yourcareuniverse. Dkt. #21. Yourcareuniverse says that the court should exercise
its discretionary authority to stay those claims while plaintiff is pursuing a “trademark
opposition proceeding” against Yourcareuniverse before the Trademark Trial and Appellate
Board.
There is some merit to the argument that a plaintiff should not be able to proceed
simultaneously on two related claims in two separate forums. However, plaintiff says that
it has filed a motion before the board to suspend those proceedings until this lawsuit is
resolved.

Yourcareuniverse does not contradict plaintiff’s argument that there is a

presumption in favor of suspending the administrative proceedings while a lawsuit is

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pending. Plt.’s Br., dkt. #26, at 4 (citing TBMP Rule 510.02(a) and The Other Telephone
Co. v. Connecticut National Telephone Co., 181 U.S.P.Q. (BNA) 125, 126 (T.T.A.B. Feb.
11, 1974)). Obviously, it would make no sense for both this court and the board to stay
proceedings while waiting for the other to finish. Yourcareuniverse says in its reply brief that
the board recently signaled its intent to issue a decision soon on plaintiff’s motion to
suspend. I see no reason to stay the claims against Yourcareuniverse until the board makes
its decision. If the board denies the motion to suspend, Yourcareuniverse may renew its
motion to stay in this court. In that event, Yourcareuniverse should be prepared to explain
how it would serve judicial economy to stay the claims against one defendant while allowing
the claims against the other defendants to proceed.

ORDER
IT IS ORDERED that the motion to stay filed by defendant Yourcareuniverse, Inc.,
dkt. #21, is DENIED.
Entered this 4th day of March, 2016.
BY THE COURT:
/s/
BARBARA B. CRABB
District Judge

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