TENNEY, District Judge.
Defendants have moved for dismissal of this trademark infringement and unfair competition action or, in the alternative, for a stay of this action pending final determination of an action which is currently before an Illinois state court ("the Illinois Action"). For the reasons stated below, defendants' motion for dismissal is denied but their motion for a stay is granted.
Plaintiff Mars, Incorporated is a Delaware corporation with its principal place of business in Virginia. Defendant Standard Brands, Inc. ("Standard") is a Delaware corporation with its principal place of business in New York. Defendant Curtiss Candy Company ("Curtiss"), a wholly owned subsidiary of Standard, is an Illinois corporation with its principal place of business in Illinois.
In April 1968, plaintiff began using the term "Fun Size" on certain candy bars sold under the trademarks of "Milky Way", "Snickers", "Peanut Munch", "Three Musketeers", "Mars" and "M & M's". In August 1971, defendant Standard began using the term "Fun Size" on its "Planters Jumbo Block" candy bars. Later, defendant Curtiss began using the term "Fun Size" on its "Baby Ruth" and "Butterfingers" products.
In September 1971, plaintiff registered "Fun Size" as an Illinois trademark. On October 12, 1971, it filed suit in an Illinois state court seeking monetary and nationwide injunctive relief for common law trademark infringement, unfair competition and violation of the Illinois Uniform Deceptive Trade Practices Act, Ill.Rev.Stat., Ch. 121½, ¶ 312 (1971). Plaintiff obtained personal jurisdiction over both Standard (which is licensed to do business in Illinois) and Curtiss. Thereafter, defendants filed a counterclaim for declaratory relief and cancellation of plaintiff's Illinois trademark certificate of registration.
Shortly after the Illinois Action was commenced, plaintiff moved for a preliminary injunction. After holding an evidentiary hearing, the Illinois trial court denied the motion upon the ground that plaintiff was not likely to succeed on the merits. Plaintiff appealed from the denial but the Illinois Appellate Court affirmed the trial court's decision. Plaintiff then petitioned the Appellate Court to reconsider its decision or to certify the case to the Illinois Supreme Court. The petition was denied. Plaintiff's petition to the Illinois Supreme Court for leave to appeal was also denied as was plaintiff's subsequent petition for reconsideration.
Just before the Illinois Supreme Court remanded the case back to the trial court, plaintiff purchased the registered trademark "Fun" from a West Coast firm. It then brought the instant action on May 15, 1973, alleging trademark infringement in violation of § 32(1) of the Trademark Act of 1946 ("the Act"),
After the instant suit was instituted, defendants suggested that plaintiff either stipulate to a dismissal with prejudice of the Illinois Action or agree that the Illinois court's findings be considered res judicata. Instead, plaintiff moved in the Illinois Action for a stay of proceedings. The Illinois trial court denied plaintiff's motion but indicated that plaintiff could renew the motion after this Court had decided the motions before it. The Illinois trial court also directed the parties to proceed with discovery.
DEFENDANTS' MOTION TO DISMISS
Invoking the doctrine of forum non conveniens, defendants have moved to dismiss this action. Plaintiff opposes on the grounds that defendants have failed to show that the Southern District of New York is inconvenient and that defendants could have moved for transfer to another federal district court under 28 U.S.C. § 1404(a).
It is fairly clear that, in situations in which there is another federal district court where the action could have been brought, § 1404(a) controls and dismissal of the action under the common law doctrine of forum non conveniens is inappropriate. See Gross v. Owen, 95 U.S.App.D.C. 222, 221 F.2d 94, 96 (1955); Fiorenza v. United States Steel International, Ltd., 311 F.Supp. 117, 120 (S.D.N.Y.1969); Simon v. Silfen, 247 F.Supp. 762, 763 (S.D.N.Y. 1965); Glicken v. Bradford, 204 F.Supp. 300, 304 (S.D.N.Y.1962). Because this action could have been brought in the federal district court for the Northern District of Illinois, dismissal of this action is therefore unwarranted.
DEFENDANTS' MOTION TO STAY
A party is not precluded from bringing a federal action based upon in personam jurisdiction even though it may have instituted previously a similar or identical action based upon in personam jurisdiction in a state court. Kline v. Burke Construction Co., 260 U.S. 226, 230, 43 S.Ct. 79, 67 L.Ed. 226 (1922). Of course, the federal court, exercising its discretionary power, may stay the action before it pending the determination of the prior state action. Mottolese v. Kaufman, 176 F.2d 301, 302-303 (2d Cir. 1949); Kamen Soap Products Co. v. Struthers Wells Corp., 159 F.Supp. 706, 712 (S.D.N.Y.1958).
Defendants ask this Court to exercise its discretion in this case. They contend that plaintiff purchased the federally registered trademark of "Fun" solely to get a second day in court and that, in reality, the two actions are one and the same. They suggest that any prejudice which might result to plaintiff upon a stay of the instant action could be remedied by having the Court direct plaintiff to amend the Illinois complaint and allege the same federal and state claims there.
Before addressing the various arguments which plaintiff offers in opposition to this motion, a few comments are in order.
The sequence of events tends to suggest that plaintiff is engaged in what is commonly known as forum shopping. The Second Circuit's discussion in Semmes Motors, Inc. v. Ford Motor Company, 429 F.2d 1197 (2d Cir. 1970) is therefore quite relevant.
In Semmes, plaintiff brought an action in a New Jersey state court. The action was then removed to a district court sitting in New Jersey. Approximately six weeks later, plaintiff brought
The same considerations of judicial economy and fairness apply here. That the district court in Maternally Yours, Inc. v. Your Maternity Shop, Inc., 89 F.Supp. 167 (S.D.N.Y.1950), did not stay the action before it in favor of the prior state action does not dictate a different result. In Maternally Yours, the district court did not, as in the instant action, have to consider the prejudice that might result to a defendant who, for a period of one and a half years, had been engaged in active litigation with the same plaintiff over facts substantially similar to those forming the basis of the federal action. Moreover, the defendant in that case apparently did not oppose a stay of the state action.
Semmes places a heavy burden upon plaintiff to show that a stay of this action would be prejudicial to it. To meet that burden, plaintiff argues that the two actions are factually and legally distinct and that it would be prejudiced by a stay, particularly if it were compelled to assert its federal and New York claims in the Illinois Action; that the Illinois court might not have the power to give it the nationwide injunctive relief which it seeks; and that the Illinois Action is "moribund". The Court will consider these arguments seriatim.
Plaintiff contends that, where as here, the second action is factually "broader" than the first, the second
Plaintiff also argues that the Illinois Action is legally distinguishable from the instant action and that it would lose certain procedural and substantive advantages were it compelled to prosecute its federal and New York claims in the Illinois Action. For example, plaintiff claims that it would lose the presumption of validity conferred by 15 U.S.C. § 1115(a) and, citing Mottolese v. Kaufman, supra, 176 F.2d at 303-304 and Boggess v. Columbian Rope Co., 167 F.Supp. 854, 856 (S.D.N.Y.1958), that it would therefore be improper to stay this action. Mottolese and Boggess involved the loss of federal discovery rights, rights which would not be available in state court proceedings. Plaintiff has not cited, and this Court cannot find, support for the proposition that the statutorily created presumption in favor of a federally registered trademark would necessarily be unavailable to it in an amended Illinois Action. Indeed, it would appear that the Illinois court would be bound to apply that presumption. Cf. Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538, 540-541 n. 1 (2d Cir. 1956). See Developments in the Law — Trade-marks and Unfair Competition, 68 Harv.L.Rev. 814, 877 (1955).
Another argument which plaintiff makes is that it would not be required to prove that the term "Fun Size" has a "secondary meaning" in order to establish a claim for unfair competition here although it does have to do so under Illinois law. At this stage of the proceedings, it is difficult to determine whether the facts of this case would entitle plaintiff to rest upon a showing of something less than "secondary meaning". See, e. g., Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774, 781-782 (2d Cir. 1964), cert. denied, 380 U.S. 913, 85 S.Ct. 899, 13 L.Ed.2d 799 (1965); Norwich Pharmacal Co. v. Sterling Drug, Inc., 271 F.2d 569, 571 (2d Cir. 1959), cert. denied, 362 U.S. 919, 80 S.Ct. 671, 4 L.Ed.2d 739 (1960); Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F.Supp. 129, 135 (S.D.N.Y. 1972); Mortellito v. Nina of California, Inc., 335 F.Supp. 1288, 1294-1295 (S.D. N.Y.1972). Additionally, it is not at all clear whether the Illinois court would be compelled to apply the same law as would be applied by a federal district court sitting in New York Flexitized, Inc. v. National Flexitized Corp., supra, 335 F.2d at 780-781; Developments in the Law — Trade-marks and Unfair Competition, supra, 68 Harv.L.Rev. at 879-80, or whether the Illinois court, under appropriate choice of law principles, would apply the New York law of unfair competition to this case. For those reasons the Court is convinced that it would be improper to stay this action upon the condition that plaintiff amend its Illinois pleadings so as to include the federal and New York claims. However, it would be both fair and more efficient to stay any further proceedings in this action until a final judgment is rendered in the Illinois Action. In that way, plaintiff could renew the legal arguments it has made in opposition to the instant motion. At the same time, defendants would be entitled to invoke the doctrines of res judicata and collateral estoppel, 1B Moore's Federal Practice ¶ 0.405  at 621, and the Court would not have to duplicate the work of the Illinois courts.
The second major argument plaintiff makes is that the Illinois court might not be able to grant plaintiff extraterritorial relief. That argument has no merit. The Illinois court has personal jurisdiction over both defendants so that if and when it ultimately finds that plaintiff is entitled to nationwide injunctive
The final argument plaintiff makes is that the Illinois Action is "moribund." Plaintiff may wish that were the case, but it is difficult to understand how it can make that argument after having brought a motion for a preliminary injunction and after having appealed its denial to the highest court in the State of Illinois.
Accordingly, defendants' motion to dismiss the action is denied but defendants' motion to stay the action until such time as a final judgment is rendered in the Illinois Action is granted.