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This, LLC v. Jaccard Corp.

United States District Court, D. Connecticut

April 26, 2016

THIS, LLC, Plaintiff,


Janet Bond Arterton, U.S.D.J.

In this action, Plaintiff This, LLC (“TLLC”) alleges state and federal trademark and copyright violations, unfair competition under Connecticut common law, common law unjust enrichment and conversion, and unfair trade practices under Connecticut statute. Defendant Jaccard Corporation (“Jaccard”) moves [Doc. # 17] to transfer this case to the United States District Court for the Western District of New York (“WDNY”) pursuant to 28 U.S.C. § 1404(a), or to dismiss, transfer, or stay the case under the “first-filed rule.” Defendant also moves to dismiss Plaintiff’s claims for copyright infringement (Count Five), trademark dilution (Count Seven), and conversion (Count Eleven). For the following reasons, Jaccard’s motion to stay this case is granted to permit the WDNY to rule on the applicability of the first-filed rule.[1]

I. Background

TLLC is a limited liability company organized under Connecticut laws, with its principal place of business in Madison, Connecticut. (Compl. [Doc. # 1] ¶ 6.) For nearly sixteen years, it has manufactured, distributed, and offered for sale and sold “unique novelty items . . . [including] wooden cooking skewers for roasting products (e.g., marshmallows or hotdogs) over an open fire or fire place (the ‘TLLC Products’) in interstate, intrastate and international commerce under and in connection with its SMORSTIX trademark.” (Id. ¶ 9.) These products include: SMORSTIX, SMORPAK, THE PERFECT MARSHMALLOW ROASTING STIX, EVERYTHING BUT THE CAMPFIRE, SMORNAMENT, SMORBOX, and SMORBAR. (Id. ¶ 21.)

Jaccard is a New York Corporation with its principal place of business in Rochester, New York. (Id. ¶ 7.) It “manufactur[s], distribut[es], market[s], offer[s] for sale and sells home, kitchen and recreational specialty products on both a national and international level, ” including what Plaintiff describes as “counterfeit and infringing packaged wooden skewers” that have “identical dimensions and configurations to those of the TLLC Products” with “confusingly similar name[d] ‘S’MORESFIRESTIX’ and ‘S’MORESGLOSTIX.’” (Id. ¶ 39.)

On April 23, 2015, counsel for TLLC sent Jaccard a cease-and-desist letter advising Defendant that TLLC was “the owner of an extensive portfolio of valuable registered trademarks (‘the Marks’)” from which it had acquired substantial goodwill, and that it had learned that Jaccard was “marketing, promoting and selling virtually identical roasting sticks under . . . confusingly similar names, ” with images of the infringing products attached to the letter. (April 23 Ltr., Ex. R to Compl. at 122-24.) It further stated that “Jaccard’s unauthorized use of the TLLCIP on or in connection with its manufacture, distribution, marketing, offering for sale and sale of the Infringing Products constitute[d] willful and intentional infringement of TLLC’s valuable rights in and to the TLLCIP” that was “causing confusion in the marketplace and leading customers to erroneously believe that Jaccard and its Infringing Products are in some way sponsored, approved or otherwise affiliated with TLLC, ” and that this conduct violated a variety of federal laws as well as “common law trademark infringement, unfair competition and copyright infringement.” (Id. at 123.) TLLC demanded that Jaccard:

1. Cease and desist any and all use of the TLLCIP or any confusingly similar marks, logos, names, or unauthorized derivatives thereof on or in connection with the manufacture, marketing, distribution, offer for sale or sale of the Infringing Products in the United States, Canada and throughout the world.
2. Provide [TLLC’s] office with a complete written accounting of all past and current sales to date in connection with Infringing Products.
3. Provide [TLLC’s] office with a complete written accounting of all Infringing Products remaining in inventory or in transit from your suppliers.
4. Provide [TLLC’s] office with identification and contact information of each and every supplier, distributor, and/or manufacturer from whom you obtained any and all materials, products and/or merchandise relating to the Infringing Products.
5. Provide this office with the identification and contact information of each and every distributor and/or merchant to whom you supplied, sold or otherwise enabled such individual or entity to distribute, market, offer for sale or sell the infringing products.

(Id. at 124.) TLLC also informed Jaccard that it was “fully prepared to pursue its civil remedies in this matter, but [wa]s presently amenable to reaching a resolution without the need for litigation, provided that Jaccard fully cooperate[d] with each of the above referenced demands within five (5) business days from the date of the document.” (Id.)

On April 27, 2015, four days after receipt of this letter, Jaccard filed a Declaratory Judgment Complaint in the WDNY. See Jaccard Corporation v. This LLC, 15-cv-06248 (W.D.N.Y.). The following day, Jaccard’s counsel emailed Plaintiff’s counsel, confirming receipt of the cease-and-desist letter and indicating an interest in “discuss[ing] this matter . . . at [Plaintiff’s] convenience.” (Email Correspondence, Ex. T to Compl. at 158.) On May 1, 2015, Plaintiff demanded that Jaccard withdraw its declaratory judgment action and “engage TLLC . . . in good faith settlement discussions” (May 1, 2015 Ltr., Ex. U to Compl. at 162), to which Jaccard responded by indicating a “willing[ness] to discuss an amicable resolution of this dispute” (May 6, 2015 Ltr., Ex. V to Pl.’s Compl. at 165). The parties appear to have engaged in on-and-off settlement negotiations without success.

Several months later, on November 4, 2015, TLLC filed this action and moved [Doc. # 3] for a Temporary Restraining Order and Order to Show Cause for Preliminary Injunction.[2] The next day, TLLC filed a motion [Doc. # 9] in the WDNY action to dismiss or transfer that action to this Court. On November 30, 2015, Jaccard moved in this action to dismiss, stay, or transfer ...

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