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Sustainable Low Maintenance Grass, LLC v. Cutting Edge Solutions, LLC

United States District Court, D. Massachusetts

September 15, 2014

SUSTAINABLE LOW MAINTENANCE GRASS, LLC, Plaintiff,
v.
CUTTING EDGE SOLUTIONS, LLC, Defendant.

MEMORANDUM & ORDER

INDIRA TALWANI, District Judge.

I. Introduction

This action for declaratory relief filed by Plaintiff Sustainable Low Maintenance Grass, LLC ("Sustainable") against Defendant Cutting Edge Solutions, LLC ("Cutting Edge") arises out of Cutting Edge's claim that Sustainable is infringing its trademark. Before the court is Cutting Edge's Motion to Dismiss Complaint, or, in the Alternative, to Transfer Venue [#11], in which it asks the court to exercise its discretion under the Declaratory Judgment Act, 28 U.S.C. § 2201, to dismiss this action.[1] For the reasons set forth below, this motion is ALLOWED.

II. Facts[2]

On March 17, 2014, Cutting Edge, by and through its attorney, Michelle D. Kahn, sent a cease-and-desist letter to Sustainable, asserting that Sustainable's use of the designation "Cutting Edge" in connection with Sustainable's fertilizers, herbicides, and related plant and garden care products (the "SLMG Mark") infringed on Cutting Edge's trademark CUTTING EDGE SOLUTIONS used in connection with fertilizers for agricultural use and related products (the "CES Mark"). Decl. Kenneth R. Berman Opp'n Defs.' Mot. Dismiss Compl., Altern. Transfer Venue Ex. A [hereinafter Berman Decl.]. In its letter, Cutting Edge also claimed that Sustainable's use of the CES Mark created a false designation of origin in violation of federal and state unfair competition laws. Id . Cutting Edge's letter stated further that Cutting Edge was "prepared to seek legal remedies to the full extent permitted by law, [but that] it would prefer to resolve this matter amicably, " and that "[f]urther action may be averted if" Sustainable, within ten days, agreed in writing to stop using the CES Mark and abandon Sustainable's application to use the designation, which was currently pending before the United States Patent and Trademark Office. Id.

Ten days later, on March 27, 2014, Kenneth Berman, an attorney for Sustainable, emailed Ms. Kahn, asking for an extension of time to respond until "sometime during the week of April 6." Id . Ex. B. In his e-mail, Mr. Berman stated that, like Ms. Kahn, he hoped that the parties could resolve this matter amicably. Id . Ms. Kahn granted this request. Id.

On April 11, 2014, Mr. Berman emailed Ms. Kahn, informing her that the evidence that Sustainable had reviewed had not persuaded it that Cutting Edge's claims were valid. Id . Ex. D. Mr. Berman noted that Cutting Edge had filed an application to register the CES Mark in August 2012, more than one year after Sustainable had filed an application to register its SLMG Mark in July 2011, and that Cutting Edge's application was filed on the basis of intent-to-use. Id .; see id. Ex. C. Mr. Berman noted that Cutting Edge's filing of an Amendment to Allege Use cited a first date of use of January 2001 and asserted that Sustainable's investigation did not yield any evidence to support this fact. Id . Ex. D. Mr. Berman wrote finally that "[w]e believe this matter should and can be resolved to the parties' mutual satisfaction without litigation" and that "[w]e hope you and Cutting Edge agree." Id.

On April 15, 2014, Ms. Kahn replied to Mr. Berman's e-mail, asking Mr. Berman what evidence he would find sufficiently compelling and asserting that "the Amendment to Allege Use under penalty of perjury filed with the USPTO is evidence." Id . Ms. Kahn further stated that she would not support her client in perpetrating fraud on the USPTO, and that, "as we are not yet in litigation, we do not wish to engage in informal discovery so please let us know what sort of proof you would be moved by." Id.

On April 17, 2014, Ms. Kahn emailed Mr. Berman, asking if she could expect a reply to her April 15, 2014 e-mail or if Cutting Edge should simply send Mr. Berman evidence of its use of the CES Mark. Id . Ex. E. Mr. Berman responded to Ms. Kahn's e-mail that day, inviting her to send Sustainable evidence that would verify Cutting Edge's use of the CES Mark and establish the time period and geographic location for which the CES Mark was used, Id . The next day, on April 18, 2014, Sustainable filed this action for a declaratory judgment, but, as described below, did not immediately serve it upon Cutting Edge. Id . ¶ 13-14.

On April 21, 2014, Ms. Kahn responded to Mr. Berman's April 17, 2014 e-mail, attaching evidence that Cutting Edge contended reflected its use of the CES Mark commencing in 2001 and continuing to the present. Id . Ex. F. Mr. Berman responded to this e-mail on April 23, 2014, asserting that the evidence provided by Cutting Edge was not evidence of trademark use and asking if it made more sense for the parties to be discussing co-existence. Id . On that same day, Ms. Kahn responded by stating that Cutting Edge does not need to engage in prelitigation discovery and that the packaging label provided to Sustainable evidenced Cutting Edge's use of the CES Mark. Id . Ex. G. Ms. Kahn further stated that if Sustainable "wishes to remain in denial" of Cutting Edge's seniority in the CES Mark, it will have to resolve the conflict "in a court of competent jurisdiction should that become necessary." Id.

Thereafter, the parties unsuccessfully continued their attempts to resolve the issue without litigation. On June 16, 2014, Cutting Edge filed suit against Sustainable and its business partner, Turf and Landscape Solutions, LLC, in the Northern District of California, seeking injunctive and monetary relief for unfair competition, common law trademark infringement, cancellation of Sustainable's federal trademark registration, and cybersquatting. Aff. Michelle D. Kahn Supp. Mot. Dismiss, Altern. Transfer Venue ¶ 24 [hereinafter Kahn Aff.]. Two days later, on June 18, 2014, Sustainable served Cutting Edge with the complaint filed in this court.[3]

III. Discussion

A. Declaratory Judgment Act


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