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BLACK & DECKER CORP. v. VERMONT AMERICAN CORP.

September 28, 1995

THE BLACK AND DECKER CORPORATION and BLACK & DECKER (U.S.) INC., Plaintiffs,
v.
VERMONT AMERICAN CORPORATION, Defendant.



The opinion of the court was delivered by: ASHMAN

 This case is presently before the court on Defendant's, Vermont American Corporation ("Vermont American"), Motion to Dismiss, Stay or Transfer. Plaintiffs, The Black & Decker Corporation and Black & Decker (U.S.) Inc. ("Black & Decker), filed this four-count Complaint on August 30, 1995 alleging: federal claims under the Lanham Act and for Common Law Trademark Infringement and Unfair Competition, and pendent state claims under the Uniform Deceptive Practices Act as enacted by Illinois and under the Illinois Anti-Dilution Act. Each of these claims results from Vermont American's promotion and sale of "Master Series" circular saw blades which allegedly infringes on Black & Decker's trademark rights to the "Master Series" mark. Black & Decker seeks injunctive relief in addition to compensatory and punitive damages. Vermont American asserts that the issues in this suit mirror those which are in dispute in its declaratory judgment action filed on August 14, 1995 (16 days prior to the instant action) in the Western District of Kentucky. In that Kentucky Complaint for Declaration of Rights, Vermont American alleges a controversy with Black & Decker over the "Master Series" trademark and seeks an order declaring that Black & Decker abandoned the trademark or, in the alternative, that Vermont American's use of the trademark does not infringe on any right of Black & Decker.

 I. Background Facts

 The relevant background facts necessary for resolution of this motion have been gleaned from Black & Decker's Complaint, Vermont American's Complaint and the pleadings and arguments of the parties. These facts will be considered undisputed for purposes of this motion only.

 Black & Decker, a Maryland corporation with principal place of business in Towson, Maryland, is an international manufacturer and distributor of hardware tools. Vermont American, a Delaware corporation with principal place of business in Louisville, Kentucky, is also an international manufacturer and distributor of hardware tools. Black & Decker and Vermont American both market and distribute tools in Illinois and they directly compete in many of their products. (Black & Decker Complaint, PP 1-3, Vermont American Complaint, PP 1, 2).

 In June 1987, Black & Decker adopted and began using "Master Series" as a trademark for a line of power tools and power tool accessories. (Black & Decker Complaint, P 13, Vermont American Complaint, Exh. B). In the Spring of 1995, Vermont American began marketing and selling its "Master Series" circular saw blades which has packaging featuring Vermont American's house mark and logo. (Black & Decker Complaint, P 16, Vermont American Complaint, PP 6, 7). On August 6, 1995, Black & Decker's trademark counsel, Harold Weinstein ("Weinstein"), sent a letter to Vermont American claiming Black & Decker's rights to the "Master Series" trademark and calling on Vermont American to "cease and desist" from any use of the trademark. (Vermont American, P 8, Exh. B). Vermont American responded by letter on August 10, 1995 denying Black & Decker's claims to trademark rights alleging that Black & Decker abandoned the "Master Series" trademark in 1992 and, in the alternative, alleging that Black & Decker used the mark only for professional industrial/construction tools rather than the consumer circular saw blades marketed under "Master Series" trademark by Vermont American. (Vemont American Complaint, P 9, Exh. C). On August 11, 1995, Weinstein replied by letter claiming ongoing use of the "Master Series" trademark, asserting the continued sale of "Master Series" tools, and renewing its "cease and desist" demand. (Vermont American Complaint, P 20, Exh. D (not attached to Court's copy)).

 From August 13-16, 1995, the National Hardware Show ("the Show") was held at McCormick Place in Chicago, Illinois, and both Black & Decker and Vermont American attended. At the Show, Vermont American displayed, marketed and promoted its "Master Series" circular saw blades. (Black & Decker Complaint, P 4). On August 21, 1995, Vermont American sent a letter to Black & Decker responding to Weinstein's August 11 letter which reiterated their position and enclosed a copy of their declaratory judgment suit filed in the Western District of Kentucky. (Vermont American Memorandum, Exh. 3). *fn1"

 II. Discussion

 Vermont American contends that this case should be tried in the Western District of Kentucky. Specifically, Vermont American argues that since both suits involve the same trademark and involve the same issues, Black & Decker's later-filed infringement Complaint should either be dismissed or stayed pending resolution of the declaratory judgment action. In the alternative, Vermont American urges that this case be transferred to the Western District of Kentucky.

 First, Vermont American suggests that judicial economy and comity favor dismissal or stay of Black & Decker's suit. Regarding judicial economy, Vermont American urges application of the "first to file" rule whereby Black & Decker's later-filed suit involving the same issues should be dismissed or stayed due to the earlier-filed declaratory judgment action. The Seventh Circuit has long held that a federal suit may be dismissed in the interests of judicial administration whenever it is duplicative of a parallel action already pending in another federal court. (Citations omitted). Serlin v. Arthur Anderson & Co., 3 F.3d 221, 223 (7th Cir. 1993). While courts have great discretion to determine whether one suit is duplicative of another; generally, a suit is considered duplicative if the "claim, parties and available relief do not significantly differ between the two actions." Serlin, 3 F.3d at 223, quoting Ridge Gold Standard Liquors, Inc. v. Joseph E. Seagram & Sons, Inc., 572 F. Supp. 1210, 1213 (N.D. Ill. 1983).

 A reading of the Complaints at issue here clearly shows that the same trademark and parties are involved in these two suits. There are differences in the remedies sought in that Vermont American seeks only a Declaration of Rights and Black & Decker seeks injunctive and monetary relief for alleged infringement of its rights. However, it is equally clear that Black & Decker's infringement action could have been and still can be brought as a compulsory counterclaim to Vermont American's Complaint. See Fed. R. Civ. P. 13 (a). *fn2" If successful on such a counterclaim, Black & Decker would be entitled to no less relief than possible under the instant complaint. Given that the same parties, issues, and, ultimately, the same relief would be possible if these disputes were resolved in one action, the Court finds these actions duplicative.

 Vermont American also urges dismissal or stay of Black & Decker's Complaint on a theory of comity. *fn3" The Court, ever respectful of the value and need for judicial comity, finds that the circumstances of this case do not compel dismissal or stay merely on the grounds that one case was filed prior to another. See Tempco Elec. Heater Corp. v. Omega Engineering, 819 F.2d 746 (7th Cir. 1987) ("this circuit has never adhered to a rigid "first to file" rule."). However, comity may impact upon the discretion of the Court in its next inquiry into the propriety of transfer under Section 1404.

 Vermont American argues that Black & Decker's infringement action should be transferred to the Western District of Kentucky pursuant to 28 U.S.C. § 1404 ("§ 1404"). Section 1404(a) governs the transfer of an action from one district court to another and provides:

 
For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or ...

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