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Retrobrands USA LLC v. General Mills Marketing, Inc.

United States District Court, D. Minnesota

October 11, 2019

Retrobrands USA LLC, Plaintiff,
General Mills Marketing, Inc. Defendant.

          Carl E. Christensen, Esq. and Christensen Law Office, PLLC, counsel for plaintiff.

          Benjamin W. Hulse, Esq. and Blackwell Burke, PA, counsel for defendant.


          David S. Doty, Judge

         This 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.


         This 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.

         In 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.

         Retrobrands 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 pending.

         On June 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 proceedings.


         I. Justiciability

         General Mills first argues that the court lacks jurisdiction over this matter because Retrobrands has not alleged a justiciable controversy. The court disagrees.

         Article 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)).

         General 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 ...

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