United States District Court, D. Delaware
TIGERCAT INTERNATIONAL, INC., TIGERCAT INDUSTRIES CORP. Plaintiffs,
CATERPILLAR INC., Defendant.
plaintiffs, Tigercat International Inc. and Tigercat
Industries Corp. ("Tigercat"), filed this action
for declaratory judgment of non-infringement and
non-dilution, arising under the ' Declaratory Judgment
Act, 28 U.S.C. §§ 2201-2202, and the trademark laws
of the United States, . 15 U.S.C. § 1051, et
seq. against defendant Caterpillar Inc.
("Caterpillar") on November 11, 2016:
moved to stay this action on November 23, 2016 pending the
administrative proceeding before the Trademark Trial and
Appeal Board ("TTAB"). (D.I. 6.) On December 8,
2016, Caterpillar moved for discretionary dismissal of this
action. (D.I. 11.) Both motions are currently pending before
the court, and, for the reasons that follow, the court will
grant Caterpillar's Motion to Stay and deny
Caterpillar's Motion for Discretionary Dismissal as moot.
January 3, 2013, Tigercat applied to register the mark
TIGERCAT (Application No. 85814584) at the U.S. Patent and
Trademark Office (the "PTO") based on
Tigercat's use of the mark in commerce. (D.I. 7 at 2.)
Tigercat, who previously registered the TIGERCAT mark for use
in the forestry field,  sought a second registration with no
designated field-of-use restriction. (D.I. 7 at 2.) On
February 25, 2013, Caterpillar sent Tigercat a notice letter
warning Tigercat that if it did not withdraw its pending
registration application, Caterpillar would seek to
"oppose [Tigercat's] application and take steps to
challenge [Tigercat's] mark." (D.I. 1, Ex. B at 3.)
After receiving the notice letter, Tigercat did not acquiesce
to Caterpillar's demands. Consequently, on November 20,
2013, Caterpillar began its opposition before the TTAB. (D.I.
7 at 2.) The focus of Caterpillar's opposition
proceedings was that, with no field-of-use restriction,
Tigercat's mark would cause confusion with and would
likely dilute Caterpillar's prior registered CAT and
CATERPILLAR marks that are used in connection with industrial
vehicles, construction equipment, and related products and
services. (D.I. 7 at 2.)
TTAB opposition has been extensive and long-lasting. Over the
course of three years the parties have engaged in discovery
proceedings before the TTAB and have "collectively
serv[ed] 106 interrogatories, 172 document requests, and 332
requests for admission, and produc[ed] over 35, 000 pages of
documents. The parties have taken a total of 22 depositions,
including seven expert depositions and three third-party
depositions." (D.I. 7 at 2.) Further, the parties have
produced consumer surveys on the issue of
likelihood-of-confusion and expert advice from linguists on
the issue of trademark similarity. (D.I.'7 at 2-3.)
Discovery and procedural disputes between the parties during
the opposition proceedings required intervention by the TTAB
and two Federal District Court Judges from the Eastern
District of Pennsylvania and the Western District of
Arkansas. (D.I. 12 at 3, 7 n.2); (D.I. 13 at 4.) As a result
of these discovery and procedural disputes, the TTAB extended
the discovery and trial dates seven times to its last
scheduled date of January 20, 2017. (D.I. 13 at 4); (D.I. 14
at ¶ 8.)
also initiated international opposition proceedings against
Tigercat after initiating its TTAB opposition. First, in
September of 2015, Caterpillar filed an infringement action
against Tigercat's Belgian dealer. (D.I. 14 at ¶2.)
Then, between February and March of 2016, Caterpillar filed:
(1) revocation actions against Tigercat in Sweden, Germany,
and Finland; (2) an opposition action against Tigercat's
trademark registration application in New Zealand; and (3) a
cancellation action against Tigercat in the UK. (D.I. 14 at
November 11, 2016, Tigercat filed the instant action seeking
declaratory judgment of non-infringement and non-dilution.
(D.I; 1 at ¶l.) Discovery was scheduled to close in the
TTAB proceeding on November 21, 2016 and the trial period was
to begin on January 20, 2017. (D.I. 12 at 3.) On November 23,
2016, Caterpillar filed a Motion to Stay the Declaratory
Judgment Action to allow the TTAB proceeding to continue.
(D.I. 6.) On December 8, 2016, Caterpillar filed a Motion to
Dismiss upon Discretionary Dismissal urging that the court
not exercise jurisdiction over Tigercat's claims. (D.I.
result of the filing of a civil action, the TTAB proceeding
was suspended on January 5, 2017 upon a motion by Tigercat.
(D.I. 24, Ex. B.) "It is the policy of the Board to
suspend proceedings when the parties are involved in a civil
action which may be dispositive of or have a bearing on the
Board case." (D.I. 24, Ex. B at 2.) Because the claims
in the civil action are related to the claims of
likelihood-of-confusion and dilution in the TTAB proceeding,
the TTAB determined that the "civil action will have
direct impact on the opposition proceeding." (D.I. 24,
Ex. B at 1, 3.) Moreover, although the TTAB suspended the
proceedings "pending final disposition of the civil
action, " should the court grant Caterpillar's
Motion to Stay, "the Board should be so notified, and
the proceedings [before the TTAB] will resume." (D.I.
24, Ex. B at 1, 4.)
STANDARD OF REVIEW
decision to stay litigation lies within the sound discretion
of the court and represents an exercise of the'
court's inherent power to conserve judicial resources by
controlling its own docket in the interests of the efficient
and fair resolution of disputed issues. See Texaco, Inc.
v. Borda, 383 F.2d 607, 608 (3rd Cir. 1967); Cost
Bros., Inc. v. Travelers Indem. Co., 760 F.2d 58, 60 (3d
Cir. 1985); Neste Oil OYJ v. Dynamic Fuels, LLC, No.
12-1744-GMS, 2013 WL 3353984, at *1 (D. Del. July 2, 2013).
The power to stay proceedings "calls for the exercise of
judgment, which must weigh competing interests and maintain
an even balance." Landis v. N. Am. Co., 299
U.S. 248, 254-55 (1936); see also ImageVision.Net, Inc.
v. Internet Payment Exch., Inc., No. 12-054-GMS, 2012 WL
5599338, at *3 (D. Del. Nov. 15, 2012). The party seeking a
stay must demonstrate "a clear case of hardship or
inequity, if there is even a fair possibility that the stay
would work damage on another party." Landis,
299 U.S. at 254-55. Thus, to determine whether to stay a
litigation, the court should consider: (1) judicial
efficiency as measured by the stage of the civil litigation
and the stay's potential to simplify the issues; (2) harm
or unfair prejudice to the non-moving party that will result
from the grant of a stay; and (3) the hardship and inequity
to the moving party if the stay is denied. See id;
Anstalt v. Bacardi & Co., No. 16-6411-GHK, 2016 WL
7635955, at *2 (CD. Cal. Nov. 16, 2016); Bonutti Skeletal
Innovations, L.L.C. v. Zimmer Holdings, Inc., No.
12-1107-GMS, 2014 WL 1369721, at *2 (D. Del. Apr. 7, 2014);
Exclusive Supplements, Inc. v. Abdelgawad, No.
12-1652-CB, 2013 WL 160275, at *1 (W.D. Pa. Jan. 15, 2013).
The Instant Action is in the ...