United States District Court, D. Minnesota
Michael E. Hegarty, United States Magistrate Judge
the Court is Defendant Modern Point, LLC’s Motion to
Dismiss (“Motion”) (ECF 21). The matter is fully
briefed, and oral argument would not materially assist the
Court. For the reasons stated below, the Court will grant the
Motion in part and deny it in part.
case arises out of a trademark dispute between the parties.
Plaintiff (or “ACU”) is the owner of the MODERN
ACUPUNCTURE mark and brand, including several federal
trademark registrations. Plaintiff uses these marks
nationally for its various goods and services, including
acupuncture services. Defendant (or “Modern”) is
the owner of the MODERN POINT ACUPUNCTURE mark and brand,
which it uses for its acupuncture and therapeutic services
offered near Minneapolis, Minnesota and in Boulder, Colorado.
January 4, 2019, Defendant sent Plaintiff a letter alleging
that Plaintiff’s use of the MODERN ACUPUNCTURE mark
causes confusion with Defendant’s MODERN POINT
ACUPUNCTURE mark in Minnesota and Colorado, and demanding
Plaintiff cease use of its mark in those areas. On March 13,
2019, Defendant filed suit against Plaintiff in the United
States District Court for the District of Minnesota seeking
declaratory, economic, and injunctive relief.
a month later, on April 11, 2019, Plaintiff filed the present
case, initially bringing claims for federal trademark
infringement, violation of the Colorado Consumer Protection
Act, and federal and common law unfair competition. ECF 1. On
June 17, 2019, Plaintiff filed the operative Amended
Complaint bringing only a single claim for declaratory
judgment of non-infringement. ECF 17. Plaintiff seeks a
declaration that it has priority to the MODERN ACUPUNCTURE
mark and does not infringe on Defendant’s MODERN POINT
Motion to Dismiss asks the Court to dismiss Plaintiff’s
Amended Complaint pursuant to the first-to-file rule.
Defendant argues that because this case and the Minnesota
case involve the same trademark dispute between the same
parties and the Minnesota case was filed first, the Court
should dismiss this case. Alternatively, Defendant requests
that the Court either transfer the case to Minnesota or stay
the case until the Minnesota proceedings are resolved.
first-to-file rule applies “when two district courts
have jurisdiction over the same controversy, affording
deference to the first filed lawsuit.” Lipari v.
U.S. Bancorp NA, 345 Fed.App’x 315, 317 (10th Cir.
2009) (unpublished); see also Hospah Coal Co. v. Chaco
Energy Co., 673 F.2d 1161, 1163 (10th Cir. 1982)
(recognizing that “when two courts have concurrent
jurisdiction, the first court in which jurisdiction attaches
has priority to consider the case”). The rule is a
discretionary doctrine, resting on principles of comity and
sound judicial administration and concerned with avoiding
duplicative or piecemeal litigation or rulings that impinge
on the authority of sister courts. Crocs, Inc. v.
Cheng's Enters., Inc., No. 06-cv-00605-PAB-KMT, 2015
WL 5547389, at *3 (D. Colo. Sept. 21, 2015) (internal
quotations omitted). Thus, “[w]hen related cases are
pending before two federal courts, the court in which the
case was last filed may refuse to hear it if the issues
raised by the cases substantially overlap.”
courts applying the first-to-file rule within the Tenth
Circuit have suggested the proper course is for the
second-filed court to make the initial determination of
whether the two actions substantially overlap. Hubbard v.
Argent Mortg. Co., LLC, No. 15-cv-02375-WJM-CBS, 2016 WL
4537869, at *5 (D. Colo. Aug. 31, 2016); see also Crocs,
Inc., 2015 WL 5547389, at *3. In making this initial
determination, courts analyze three factors: “(1) the
chronology of events; (2) the similarity of parties; and (3)
the similarity of issues.” Wakaya Perfection, LLC
v. Youngevity Int'l, Inc., 910 F.3d 1118, 1124 (10th
Cir. 2018) (internal quotations omitted). Determining the
chronology of events typically requires only a comparison of
the dates the two complaints were filed. Id. As to
the second factor, “[t]he parties to the two actions
need not be necessarily identical;” only similarity or
substantial overlap is required. Antero Res. Corp. v. S.
Jersey Res. Grp., LLC, No. 15-cv-00656-REB-MEH, 2015 WL
13185990, at *2 (D. Colo. Oct. 22, 2015), report and
recommendation adopted, No. 15-cv-00656-REB-MEH, 2016 WL
8578553 (D. Colo. Mar. 21, 2016). Third, “the issue[s]
must only be substantially similar in that they seek like
forms of relief and hinge on the outcome of the same
legal/factual issues.” Id. (internal
quotations omitted). If a second-filed court decides that the
two actions substantially overlap, “it may stay the
case, transfer it to the first filed court, or, in rare
cases, dismiss the case entirely.”
Hubbard, 2016 WL 4537869, at *5 (emphasis added).
parties agree that the first two factors of the first-to-file
analysis, the chronology of events and the similarity of
parties, are satisfied. They disagree as to the similarity of
the issue in the present case with those in the Minnesota
case. Defendant argues that the issues in the two cases are
nearly identical, and a judgment in the Minnesota case would
necessitate a determination of the issue in the present case.
In response, Plaintiff argues that no part of this action
hinges on the legal or factual issues in dispute in the
Minnesota action. Although Plaintiff concedes the Minnesota
case concerns a greater scope of disputed issues, Plaintiff
argues that those issues do not subsume the issues in the
however, unsuccessfully attempts to pick apart the issue in
the current case in an attempt to distinguish it from the
issues contained in the Minnesota case. Upon review of the
operative complaints in both cases, the Court finds the
issues are “substantially similar in that they
seek like forms of relief and hinge on the outcome of the
same legal/factual issues.” Antero Res. Corp.,
2015 WL 13185990, at *2 (emphasis added).
present case, Plaintiff seeks a declaratory judgment that
Plaintiff has priority to the MODERN ACUPUNCTURE mark and
does not infringe Defendant’s MODERN POINT ACUPUNCTURE
mark. ECF 17 at 13. In the Minnesota action, Defendant seeks,
among other relief requested, an injunction prohibiting
Plaintiff from using various MODERN ACUPUNCTURE marks in
Minnesota and Colorado as well as a declaration that
Defendant has priority to various MODERN POINT ACUPUNCTURE
marks. ECF 17-6 at 24-25. The relief ...