420 F.Supp.3d 646
N.D. Ohio2019Background
- J.M. Smucker Co. (Ohio) launched Smucker’s Natural Fruit Spread products (2013) and used/advertised the phrase “Fruit is our 1st Ingredient.”
- Promotion in Motion, Inc. (PIM, New Jersey), licensee of Welch’s Fruit Snacks, has used the tagline “Fruit is our 1st Ingredient!” on Welch’s packaging since 2015.
- PIM sent cease‑and‑desist letters to Smucker (Apr. 2 and Apr. 30, 2019); after follow‑up (May 14) Smucker replied it needed more time (May 15) but filed a declaratory judgment action in Ohio on May 17, 2019 without notifying PIM of the filing.
- PIM filed a coercive trademark infringement suit in D.N.J. on May 24, 2019; Smucker moved in New Jersey to dismiss under the first‑to‑file rule.
- PIM moved to dismiss Smucker’s Ohio suit asserting (1) lack of personal jurisdiction over the declaratory claim and (2) anticipatory/ forum‑shopping filing that defeats the first‑to‑file presumption; PIM also challenged Smucker’s infringement count under Rule 12(b)(6).
- The Ohio court denied dismissal for lack of personal jurisdiction (exercised pendent jurisdiction over the declaratory claim) but granted dismissal under the anticipatory‑action exception to the first‑to‑file rule and therefore declined to exercise jurisdiction over the declaratory action.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over declaratory‑judgment claim | Smucker: PIM’s sales/promotions in Ohio establish contacts; due process satisfied; pendent jurisdiction appropriate because court has PJ over infringement claim | PIM: Only enforcement contacts (cease‑and‑desist letters) relevant to declaratory claim; letters alone insufficient for specific jurisdiction | Court: Smucker failed to show specific PJ for declaratory claim but exercised pendent personal jurisdiction (denied Rule 12(b)(2) dismissal) |
| Anticipatory filing / first‑to‑file rule (should Ohio declaratory action proceed) | Smucker: needed prompt judicial relief; did not engage in deceit; PIM gave no clear warning it would sue first | PIM: Smucker filed to preempt PIM, misled PIM during settlement/extension period—procedural fencing and forum shopping | Court: Applied Grand Trunk factors; found bad faith/anticipatory suit; granted dismissal under anticipatory‑action exception (declined to exercise jurisdiction) |
| Adequacy of trademark infringement claim (Rule 12(b)(6)) | Smucker: amended complaint pleads Lanham Act and state common‑law claims | PIM: Count II fails to state a claim | Court: Did not reach the merits of the 12(b)(6) challenge after dismissing declaratory action on first‑to‑file grounds |
| Whether amendment to add injunctive relief cures anticipatory defect | Smucker: later amendment (injunctive relief) cures procedural problem | PIM: initial declaratory suit was improperly tactical | Court: Rejected Smucker’s cure argument; inequitable to permit tactical declaratory filing to be saved by later amendment |
Key Cases Cited
- International Shoe Co. v. Washington, 326 U.S. 310 (1945) (establishes due‑process standard for personal jurisdiction)
- Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324 (Fed. Cir. 2008) (in declaratory actions, focus is on the patentee’s enforcement activities directed at the forum; letters alone often insufficient)
- SunCoke Energy, Inc. v. Man Ferrostaal Aktiengesellschaft, 563 F.3d 211 (6th Cir. 2009) (personal jurisdiction must be proper for each claim)
- Grand Trunk W. R.R. Co. v. Consol. Rail Corp., 746 F.2d 323 (6th Cir. 1984) (factors for whether declaratory‑judgment jurisdiction should be exercised)
- Certified Restoration Dry Cleaning Network, LLC v. Tenke Corp., 511 F.3d 535 (6th Cir. 2007) (first‑to‑file rule and comity; deference to first‑filed/coercive suits)
- CompuServe, Inc. v. Patterson, 89 F.3d 1257 (6th Cir. 1996) (prima facie standard for ruling on Rule 12(b)(2) from affidavits/pleadings)
- Southern Mach. Co. v. Mohasco Indus., 401 F.2d 374 (6th Cir. 1968) (three‑part test for specific jurisdiction)
- Wilton v. Seven Falls Co., 515 U.S. 277 (1995) (district courts have discretion to decline declaratory relief)