United States District Court, D. Minnesota
E. Christensen, Esq. and Christensen Law Office, PLLC,
counsel for plaintiff.
Benjamin W. Hulse, Esq. and Blackwell Burke, PA, counsel for
S. Doty, Judge
matter is before the court upon the motion to dismiss or stay
by defendant General Mills Marketing, Inc. Based on a review
of the file, record, and proceedings herein, and for the
following reasons, the motion to dismiss is denied and the
motion to stay is granted.
declaratory judgment action arises from the parties'
stated interests in the DUNKAROOS trademark registered with
the United States Patent and Trademark Office (USPTO),
registration number 1755584 (Trademark). Am. Compl. ¶
11. General Mills has held the Trademark for use in
cereal-based food and frosting since 1991. Id.
2009, General Mills and Jeffrey Kaplan, principal of
plaintiff Retrobrands USA, LLC, executed a settlement
agreement in which Kaplan and, in effect, his businesses
agreed to permanently refrain from using any trademark owned
by General Mills. Hulse Decl. Ex. 1 ¶¶ 11, 13. On
September 17, 2018, Retrobrands filed an intent-to-use
application with the USPTO for the Trademark with respect to
cereal-based snack foods. Am. Compl. ¶ 22. Retrobrands
then filed an action with the Trademark Trial and Appeal
Board (TTAB) to cancel the Trademark. Id. ¶ 23.
General Mills, Inc. - the parent company of General Mills
Marketing, Inc. - responded by filing suit against
Retrobrands and its principal Jeffrey Kaplan in Hennepin
County District Court alleging that the settlement agreement
bars Retrobrands from using the Trademark. See Hulse
Decl. Ex. 1; id. ¶¶ 11, 13, 16-20. The
TTAB suspended the cancellation proceedings in light of the
state court action, as is routine. Hulse Decl. Ex. 2.
and Kaplan then removed the case to federal court on the
basis of federal question jurisdiction. Judge Nancy E. Brasel
remanded after concluding that the case turned not on an
interpretation of trademark law, but rather on whether
Retrobrands and Kaplan had breached the settlement agreement
by pursuing the Trademark. Gen. Mills, Inc. v.
Retrobrands USA, LLC, No. 19-258, 2019 WL 1578689, at
*2-3 (D. Minn. Apr. 12, 2019). The state court action remains
21, 2019, Retrobrands filed this action against General
Mills, and later amended the complaint, seeking (1) a
declaration that General Mills has abandoned the Trademark
for cereal-based snack food and frosting, (2) a declaration
that Retrobrands has not infringed the Trademark or,
alternatively, that General Mills' use of the mark since
2012 is insufficient to give rise to exclusive use, and (3)
an order directing the USTPO to cancel registration number
1755584 for the Trademark. Am. Compl. at 6. General Mills now
moves to dismiss or, in the alternative, to stay pending
resolution of the Hennepin County action and TTAB
Mills first argues that the court lacks jurisdiction over
this matter because Retrobrands has not alleged a justiciable
controversy. The court disagrees.
III of the United States Constitution limits the jurisdiction
of federal courts to justiciable cases and controversies.
U.S. Const. art. III,' 2; Lujan v. Defenders of
Wildlife, 504 U.S. 555, 559-60 (1992). The Declaratory
Judgment Act, on which this case is premised, provides that,
“[i]n a case of actual controversy, ” the court
“may declare the rights and other legal relations of
any interested party seeking such declaration.” 28
U.S.C. § 2201(a). To be a justiciable controversy in
this context, there must be “a substantial
controversy” between parties with “adverse legal
interests.” Marine Equip. Mgmt. Co. v. United
States, 4 F.3d 643, 646 (8th Cir. 1993) (internal
quotation marks omitted). Because this test “is
imprecise, the decision of whether such controversy exists is
made upon the facts on a case by case basis.”
Id. (citing Golden v. Zwickler, 394 U.S.
103, 108 (1969)).
Mills argues that there is no actual controversy because it
has not sued or threatened to sue Retrobrands for trademark
infringement. Although it is true that an actual controversy
exists when a party has brought a legal claim of
infringement, a plaintiff need not wait for the threat of an
actual lawsuit to request declaratory ...