Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Genender Int'l, Inc. v. Skagen Designs, Ltd., No. 07 C 5993, Slip Op. (N.D. Ill. Apr. 14, 2008) (Grady, J.).

Judge Grady denied defendant Skagen's Fed. R. Civ. P. 12(b)(3) motion to dismiss plaintiff Genender's declaratory judgment ("DJ") case. The Court also granted in part Skagen's Fed. R. Civ. P. 12(b)(6) motion to dismiss, dismissing Genender's tortious interference claim. Skagen argued that Genender's DJ suit should be dismissed in favor of Skagen's later-filed suit for design patent and trade dress infringement filed in the District of Nevada. Skagen argued that dismissal was required by the Seventh Circuit's standard as set forth in Tempco Elec. Heater Corp. v. Omega Eng., Inc., 819 F.2d 746 (7th Cir. 1987). The Court, however, held that Federal Circuit law controlled because of the design patent claims. And the Federal Circuit explicitly rejected Tempco in Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931 (Fed. Cir. 1993) (abrogated on other grounds). Instead, the Federal Circuit required that Skagen provide a "sound reason" that proceeding with the DJ would be unjust or inefficient. Skagen provided no such reason and, in fact, Skagen's counsel agreed at argument that it did not matter whether the case was tried in the Northern District or in the District of Nevada.

The Court dismissed without prejudice Genender's tortious interference claim. Genender alleged that Skagen interfered with Genender's business relationship with customer Sears by copying Sears personnel on cease and desist letters. But the claim was deficient because Genender did not allege that it lost any Sears business because of Skagen's actions.

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Geisha, LLC v. Tuccillo, No. 05 C 5529, 2007 W> 2608558 (N.D. Ill. Sep. 4, 2007) (Pallmeyer, J.).

Judge Pallmeyer held that the Court lacked jurisdiction over plaintiff Geisha’s declaratory judgment claim. Geisha operates a series of restaurants, each called Japonais – Japonais Chicago, Japonais New York and Japonais Las Vegas. Between the openings of Japonais Chicago and Japonais New York, defendant Roy Tuccillo (“Tuccillo”) filed an intent to use trademark application for a nearly identical Japonais mark, with the “firm intent” to open a restaurant using the mark. Geisha registered Japonais with the State of Illinois, but never federally registered the mark. Geisha sought, among other things, a declaratory judgment that Geisha owned the Japonais mark and that Tuccillo’s opening of a Japonais restaurant would infringe Geisha’s mark. The Court noted that the Seventh Circuit looks to patent law when considering whether there is an actual controversy in a trademark declaratory judgment action. The Court, therefore, relied upon the Supreme Court’s recent MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 765 (2007), decision which required that a controversy be “real and immediate,” overturning the Federal Circuit’s reasonable apprehension of suit test. The Court held that there was no “real and immediate” controversy. While Tuccillo had filed for registration of a Japonais mark nearly identical to Geisha’s and expressed his firm intent to open a Japonais restaurant, Tuccillo’s actions did not suggest that there was “imminent danger” that he would actually open a restaurant when the suit was filed. Tuccillo testified that he had generally looked at some properties to purchase for the restaurant, but he did not remember when he had done that and could not identify specific properties. Additionally, Tuccillo purchased a Chinese restaurant in 2002, but leased the space without opening a Japonais restaurant in 2003, two years before Geisha filed this suit.

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