Republic Techs. (NA), LLC v. BBK Tobacco & Foods, LLC d/b/a HBI Int’l., No. 16 C 3401, Slip Op. (N.D. Ill. Jul. 7, 2016) (Bucklo, J.).
Judge Bucklo granted declaratory judgment defendant HBI’s Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiffs’ (collectively “Republic Tobacco”) complaint without prejudice to replead, if possible, in this trademark dispute related to cigarette rolling papers.
As an initial matter, the Court determined that HBI’s standing challenge was a facial one arguing that actual controversy was not properly pled, as opposed to contesting the facts pled. The analysis was complicated by the fact that both parties’ briefing went beyond the complaint arguing additional facts. Because it was a facial challenge, the Court accepted Republic Tobacco’s factual allegations. For that reason, the Court did not consider the affidavit and exhibits that Republic Tobacco attached to its papers.
Republic Tobacco’s allegations did not establish an actual controversy. Republic Tobacco makes three relevant allegations:
- HBI sent Republic Tobacco a letter seeking to agree to changes to Republic Tobacco’s packaging;
- HBI previously threatened Republic Tobacco with a trademark lawsuit over hemp rolling papers; and
- HBI sent a copy of its letter to a Republic Tobacco customer.
Republic Tobacco’s factual allegations have been held to be relevant to an actual controversy analysis. But where the factors created an actual controversy, they either were combined with significant other factors or went well beyond sending a customer a copy of a cease and desist letter.
Similarly, a history of litigation can create actual controversy. But it requires much more extensive litigation, as opposed to just a threat of future litigation, as HBI did here.