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Tigercat International Inc. v. Caterpillar Inc.

United States District Court, D. Delaware

May 2, 2018




         The 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: (D.1.1.)

         Caterpillar 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.


         On 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, [1] 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.)

         The 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.)

         Caterpillar 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 ¶¶ 3-7.)

         On 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.[2] (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. 11.)

         As a 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.)


         A 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.[3] 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).


         A. Judicial Efficiency

         i. The Instant Action is in the ...

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