120 F. Supp. 3d 327
S.D.N.Y.2014Background
- Gelmart plans to sell flesh-colored underwear under the brand 'Skintimates' and sought USPTO registration for the Skintimates word mark.
- Eveready sells shaving-related products under the Skintimate mark and challenged Gelmart's mark via cease-and-desist letters and USPTO opposition.
- Gelmart filed a declaratory judgment action seeking non-infringement; Eveready moved to dismiss under Rule 12(b)(1) and 12(b)(6).
- Gelmart alleged extensive pre-launch activity: retailer presentations, prototypes, and planned manufacture for U.S. market within weeks.
- Eveready asserted Gelmart’s mark is confusingly similar and would infringe/dilute Eveready’s Skintimate; Eveready objected to Gelmart’s anticipated launch and registrations.
- The court denied Eveready’s motion to dismiss the DJA claim, and Gelmart’s tortious interference claim was voluntarily dismissed; a pretrial conference was scheduled.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Complaint shows a case of actual controversy under the DJA | Gelmart argues adverse interests and credible threats of litigation based on Eveready’s opposition and letters. | Eveready contends the dispute is not ripe due to lack of concrete launch plans and details. | Yes; court finds an actual controversy for DJA purposes. |
| Whether the dispute is ripe/justiciable under MedImmune standards | Gelmart contends well-defined facts show imminent product launch and substantial preparation. | Eveready argues insufficient concrete development details to warrant adjudication. | Ripe; pleading demonstrates definite legal/market dimensions and readiness for resolution. |
| Whether the DJA claim should be dismissed at the court's discretion | Gelmart maintains efficient resolution is appropriate and avoids potentially duplicative litigation. | Eveready asserts potential prejudice and misalignment of timing with product readiness. | No; court declines to exercise discretionary dismissal. |
| Whether Gelmart's tortious interference claim should remain | N/A | N/A | Voluntarily dismissed by Gelmart. |
Key Cases Cited
- Starter Corp. v. Converse, Inc., 84 F.3d 592 (2d Cir.1996) (actual controversy exists when plaintiff designs prototypes and solicits customers)
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (U.S. 2007) (lowers threshold for actual case or controversy in IP declaratory judgments)
- Nike, Inc. v. Already, LLC, 663 F.3d 89 (2d Cir.2011) (threat of future litigation remains relevant to jurisdiction)
- Already, LLC v. Nike, Inc., 133 S. Ct. 721 (U.S. 2013) (supreme court affirmation of declaratory action viability in IP disputes)
- Matthews Int’l Corp. v. Biosafe Engineering, LLC, 695 F.3d 1322 (Fed. Cir.2012) (claim non-justiciable when device use does not infringe patent)
- Vantage Trailers, Inc. v. Beall Corp., 567 F.3d 745 (5th Cir.2009) (not justiciable when depiction is too generic and no manufacturing ability)
- GMA Accessories, Inc. v. Idea Nuova, Inc., 157 F. Supp. 2d 234 (S.D.N.Y.2000) (claim not justiciable when preparation is limited to suspended USPTO application)
- Geisha, LLC v. Tuccillo, 525 F. Supp. 2d 1002 (N.D. Ill.2007) (not justiciable when potential infringer’s pre-launch activity is limited)