Deltona Transformer Corporation v. The Noco Company

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA

ORLANDO DIVISION

DELTONA TRANSFORMER

CORPORATION,

Plaintiff,

v. Case No: 6:19-cv-308-Orl-41LRH

THE NOCO COMPANY,

Defendant.

/

ORDER

THIS CAUSE is before the Court on Defendant’s Motion to Dismiss (“Motion,” Doc. 12)

and Plaintiff’s Response in Opposition (Doc. 27). The Motion requests that the Court dismiss the

Complaint (Doc. 1) for lack of personal jurisdiction, or, in the alternative stay the case pending the

resolution of cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) or

transfer the case to the Northern District of Ohio. (Doc. 12 at 1). United States Magistrate Judge

Leslie R. Hoffman issued a Report and Recommendation (“R&R,” Doc. 45) in which she

recommends that the Motion be denied in its entirety. Defendant filed Objections to the R&R

(“Objection,” Doc. 46) and therein, it only objects to the R&R’s recommendation denying

Defendant’s request to stay the case. (Id. at 2). Plaintiff filed a Response to Defendant’s Objections

(“Objection Response,” Doc. 48). For the reasons stated herein, the Motion will be denied, and the

R&R will be adopted and confirmed.

The question before the Court is whether this action should be stayed pending the

cancellation proceedings currently before TTAB pursuant either to the primary jurisdiction

doctrine or the Court’s inherent power. To adequately understand the arguments propounded by

the parties and by Judge Hoffman in the R&R, the Court will provide a brief background of this

case and the proceedings before TTAB.

I. BACKGROUND

Plaintiff is a privately-owned company that engages in designing, manufacturing, and

distributing products in the automotive, motorcycle, and power sport industries. (Doc. 1 ¶ 7).

Plaintiff is the owner of various trademarks such as the marks BATTERY TENDER and

DELTRAN BATTERY TENDER, United States Trademark Registration Nos. 3474591 and

4281421 respectively. (Id. ¶¶ 8–9). The Battery Tender mark is used for battery charger products.

(Id. ¶ 9). The Deltran Battery Tender mark is also used for battery charger products and for battery

charger accessories and cigarette lighter adaptors. (Id.). These two marks are the marks chiefly at

issue in this case, along with United States Trademark Registration No. 4750963, also for

BATTERY TENDER, but for batteries, battery charger products, battery jump starters, battery

voltage indicators, solar panels, and other battery related products and accessories. (Id. ¶ 10).1

Plaintiff brings this action alleging trademark infringement, false designation of origin,

unfair competition, and deceptive acts and practices. (See generally id.). Plaintiff alleges that

Defendant sells battery chargers, jump starters, solar panels, portable power devices, and other

related products that compete directly with Plaintiff’s products. (Id. ¶ 26). According to Plaintiff,

Defendant has been infringing on Plaintiff’s marks as well as using confusing advertisements to

draw attention away from Plaintiff’s products and to Defendant’s infringing ones. (Id. ¶¶ 28–29).

A month before the filing of this action, Defendant filed a Petition for Cancellation before

TTAB seeking to have one of the registrations for the BATTERY TENDER mark cancelled,2

1 Plaintiff also holds an International Registration for BATTERY TENDER, International

Registration No. 1227645, and while it is at issue in this case, it is on the periphery for purposes

of this Order. (Doc. 1 ¶ 11).

2 There appears to be some confusion on the record about which registration number was

arguing that it has become generic. (Doc. 12 at 5; Petition for Cancellation, Doc. 12-3, at 2). Later,

after Judge Hoffman issued the R&R, Defendant informed the Court in its Objection that it had

begun a second Cancellation Proceeding for the other two registrations pleaded in the Complaint

for BATTERY TENDER and DELTRAN BATTERY TENDER.3 (Doc. 46 at 7). However,

Plaintiff has since informed the Court that there is not a Cancellation proceeding pending for the

three marks at issue in this case. TTAB consolidated the two proceedings, dismissed the claims

against two of the marks, and has been allowed to proceed only the claim regarding Registration

No. 4750963 for battery chargers. (Doc. 48 at 5–6; see generally TTAB Order, Doc. 48-2).

II. ANALYSIS

In the R&R, Judge Hoffman determined that a stay would be inappropriate pursuant to both

this Court’s inherent authority and the doctrine of primary jurisdiction. “‘Primary jurisdiction is a

judicially created doctrine whereby a court of competent jurisdiction may dismiss or stay an action

pending a resolution of some portion of the actions by an administrative agency.’” Smith v. GTE

Corp., 236 F.3d 1292, 1298 n.3 (11th Cir. 2001) (quoting Wagner & Brown v. ANR Pipeline Co.,

837 F.2d 199, 201 (5th Cir. 1988)). “[T]he primary jurisdiction doctrine ‘comes into play whenever

enforcement of the claim requires the resolution of issues which, under a regulatory scheme, have

been placed within the special competence of an administrative body; in such a case the judicial

process is suspended pending referral of such issues to the administrative body for its views.’” Id.

(quoting United States v. Western Pac. R.R. Co., 352 U.S. 59, 64 (1956)).

Judge Hoffman reasoned that because this case and the TTAB proceedings are both in their

infancy, it would not be more efficient for the Court to wait for the TTAB proceedings to conclude.

No. 3474591. (Doc. 48 at 4). And, Defendant states that Registration No. 4750963 was at issue in

the second cancellation proceeding. (Doc. 46 at 8, n. 4).

3 Regardless of the order of the registrations challenged, it is not disputed that Registration

Additionally, the TTAB proceedings would not be dispositive of all of the claims at issue in this

case. At the time the R&R was issued, cancellation proceedings had only been initiated for one of

the registrations for the BATTERY TENDER mark. And, now, the same rings true because the

claims before TTAB involving the other two registrations for the BATTERY TENDER and

DELTRAN BATTERY TENDER marks have been dismissed.

Further, despite Defendant’s argument that a ruling on the genericness of BATTERY

TENDER would be dispositive for all of Plaintiff’s BATTERY TENDER marks, including

DELTRAN BATTERY TENDER, this is not the case. The Order from TTAB dismissing the two

marks from its review makes it clear that a determination of genericness is based on the

consideration of the term as a whole, not on a component part. (Doc. 48-2 at 10 (citing Estate of

P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 545–46 (1920)). Even if TTAB decides

that the term BATTERY TENDER has become generic, that determination will not apply to the

DELTRAN BATTERY TENDER marks. So, even if the Court stayed this case as to the mark

currently being reviewed by TTAB, the claims before this Court regarding the other three marks

would necessarily continue. It would not be an efficient use of judicial resources to stay claims

regarding one mark while having claims based on three other marks proceed.

Additionally, any decision on genericness rendered by TTAB is not dispositive because it

is reviewable by this Court de novo. This weighs against staying under both of Defendant’s

theories. Though Defendant cites B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293

(2015), for the proposition that issue preclusion applies to rulings from TTAB, Defendant is

confused as to when issue preclusion applies. Not only does this Court have jurisdiction over issues

of cancellation pursuant to 15 U.S.C. § 1119, but also any decision rendered by TTAB is

reviewable de novo in this Court. 15 U.S.C. § 1071(b)(1); see also Goya Foods, Inc. v. Tropicana

Prods., Inc., 846 F.2d 848, 852–53 (2d Cir. 1988). The only time a decision rendered by TTAB on

either to this Court or to the Federal Circuit. B & B Hardware, 135 S. Ct. at 1301 (“After the TTAB

decides whether to register the mark, a party can seek review in the U.S. Court of Appeals for the

Federal Circuit, or it can file a new action in district court.”). Indeed, in B & B Hardware, the

parties “did not seek judicial review in either the Federal Circuit or District Court,” causing

TTAB’s decision to become a final decision entitled to preclusive effect. Id. at 1302. If the Court

were to stay this case pending TTAB’s decision on the genericness of the single mark it is

considering––Registration No. 4750963 for battery chargers––TTAB’s decision would not be

entitled to preclusive weight before this Court because Plaintiff could challenge the decision and

receive a de novo review.

Finally, “[d]etermination of the propriety of registration and whether or not infringement

has occurred will depend on dates of use, timing of acquisition of rights, strength of marks, and

other factors germane to a likelihood of confusion. None of these issues requires the Court’s

deference to the TTAB’s administrative expertise.” BP Int’l Rights Holdings, Inc. v. Boston

Gourmet Coffeehouse, Inc., 6:07-cv-1783-Orl-22KRS, 2008 WL 11436772, at *1 (M.D. Fla. Jan.

2, 2008). Thus, any decision by TTAB will not be binding on this Court and will likely have very

little effect otherwise on this Court’s determination of validity because the issue being decided by

the TTAB board is at least somewhat distinct from the issues before this Court. Accordingly,

staying the case pursuant to primary jurisdiction would not be proper in this case.4

Defendant also objects to the R&R’s findings, arguing that because Plaintiff has not alleged

any ongoing infringement there is no urgent need for this case to continue, and thus it would not

be prejudiced by a stay. Plaintiff responds and asserts that it does have an urgent need for relief

from the Court and states that it has not acted in any way to the contrary. Regardless of whether

4 Though the Eleventh Circuit has not weighed in on the applicability of the primary

jurisdiction doctrine in a trademark infringement action, the First, Second, and Ninth Circuits have

infringement is ongoing—Plaintiff claims it is—Plaintiff has brought a claim for infringement

before this Court, and TTAB’s ruling will not address infringement, only genericness of one of the

four marks at issue here. And, as discussed above, a stay would not be an efficient use of judicial

resources regardless of the urgency of Plaintiff's claims.

Thus, after a de novo review of the record, the Court agrees with Judge Hoffman’s analysis.

Defendant’s Motion to Dismiss will be denied.

Accordingly, it is ORDERED and ADJUDGED as follows:

1. The Report and Recommendation (Doc. 45) is ADOPTED and CONFIRMED and

made a part of this Order.

2. The Motion to Dismiss (Doc. 12) is DENIED.

DONE and ORDERED in Orlando, Florida on October 29, 2019.

UNITED STATES DISTRICT JUDGE

Copies furnished to:

Counsel of Record