Next Level SportSystems, Inc. v. S&S Activewear, LLC, et al., No. 18 C 5926, Slip Op. (N.D. Ill. Mar. 7, 2019) (Durkin, J.).

Judge Durkin granted defendant YS Garments LLC’s Fed. R. Civ. P. 12(b)(7) motion to dismiss for failure to join Sierra Sportswear, Inc., the co-owner of plaintiff Next Level’s trademark-in-suit as a necessary or indispensable party pursuant to Fed. R. Civ. P. 19.

Next Level argued that it adequately protected Sierra’s interest in the suit, but regardless of whether that was true, the action could still “impair or impede” Sierra’s interest, in particular if the trademark were invalidated.

Additionally, proceeding without Sierra would put defendants at risk of multiple suits or obligations. A judgment in defendants’ favor would only be good as to Next Level Sierra would have at least some ability to bring its own action. YS also argue that Sierra could be involuntarily joined as the trademark owner, just as courts do in the patent context. But the Court declined to force joinder. Instead, Next Level could take action in New York state where Sierra had a registered agent.