Apex Beauty Products Mfg. Corp. v. Brown Shoe Co.
| Decision Date | 17 September 1962 |
| Citation | 209 F. Supp. 73 |
| Parties | APEX BEAUTY PRODUCTS MANUFACTURING CORPORATION, d.b.a. Apex Beauty Products, Plaintiff, v. BROWN SHOE COMPANY, Inc., Defendant. |
| Court | U.S. District Court — Southern District of New York |
Rosenman, Colin, Kaye, Petschek & Freund, New York City, for plaintiff, Andrew J. Schoen, New York City, Bartholomew Diggins, and Daniel W. Sixbey, Washington, D. C., of counsel.
Sullivan & Cromwell, New York City, Gravely, Lieder & Woodruff, St. Louis Mo., for defendant, Henry N. Ess, III, Peter R. Fisher, New York City, Richard G. Heywood, St. Louis, Mo., of counsel.
This is a motion brought on by the defendant Brown Shoe Company seeking to dismiss the complaint pursuant to Rule 12(b) (1) of the Federal Rules of Civil Procedure, 28 U.S.C. on the ground that this court lacks jurisdiction over the subject matter.
The action is one for declaratory judgment wherein plaintiff seeks (1) a determination that it has the right to use the unregistered trademark "Apex Naturalizer" in commerce on a hair preparation, (2) an order restraining defendant from interfering with plaintiff's use of the said trademark, and (3) an order directing the Patent Office to register plaintiff's trademark.
The complaint states that plaintiff is engaged in commerce and has adopted the trademark "Apex Naturalizer" for a hair preparation. Plaintiff has a trademark application now pending before the United States Patent Office seeking registration of this mark. The complaint further alleges that defendant claims to be the holder of the registered trademark "Naturalizer" for use in connection with the manufacture and sale of shoes, and is the owner of federal trademark registrations No. 236545 and No. 415873 related thereto. It goes on to assert that the defendant has given notice to the plaintiff of a claim of unfair competition, charging infringement of its registered mark by reason of the plaintiff's use of the mark "Apex Naturalizer," and that a justiciable controversy arises thereby.
The issue raised by this motion is whether a federal court has jurisdiction under 28 U.S.C. § 2201 (Declaratory Judgment Act) and 15 U.S.C.A. § 1121 (Lanham Act) of an action for declaratory judgment arising under the federal trademark laws when the party bringing the action does not allege ownership of a federally registered trademark but relies rather on the factual jurisdictional allegation that the defendant's mark is registered. The answer clearly is affirmative.
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La Chemise Lacoste v. Alligator Co., Inc.
...Engineering and Manufacturing, Inc. v. Barnes, 424 F.2d 42, 165 U.S.P.Q. 229 (10th Cir. 1970); Apex Beauty Products Manufacturing Corp. v. Brown Shoe Co., 209 F.Supp. 73 (S.D.N.Y.1962). Alligator threatened Lacoste with an action for infringement of its federally registered trademark and, u......
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...28 U.S.C. § 1332, as well as federal question jurisdiction under the Lanham Act are present. Apex Beauty Products Manufacturing Corp. v. Brown Shoe Co., 209 F.Supp. 73, 74 (S.D.N.Y.1962); see J. Gilson, supra, § 8.032, at 8-18.1—8-19. Now, to defendant's Rule 12(b)(6) challenge. IV. It is w......
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...1063, 1066, 2 L.Ed.2d 1174 (1958)." See also Iding v. Anaston, 266 F.Supp. 1015 (N.D.Ill.1967), and Apex Beauty Products Mfg. Corp. v. Brown Shoe Co., Inc., 209 F.Supp. 73 (S.D.N.Y.1962). II. DECLARATORY D.M. seeks a declaratory judgment that (1) Royal Saxe's registrations in both the cross......
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La Chemise Lacoste v. Alligator Company, Civ. A. No. 3876.
...Engineering and Manufacturing, Inc. v. Barnes, 424 F.2d 42, 165 U.S.P.Q. 229 (10th Cir. 1970); Apex Beauty Products Manufacturing Corp. v. Brown Shoe Co., 209 F.Supp. 73 (S.D.N.Y.1962). Alligator threatened Lacoste with an action for infringement of its federally registered trademark and, u......