La Chemise Lacoste v. Alligator Company, Civ. A. No. 3876.

• Decision Date: 04 June 1970
• Docket Number: Civ. A. No. 3876.
• Citation: 313 F. Supp. 915
• Parties: LA CHEMISE LACOSTE, a French corporation, Plaintiff, v. The ALLIGATOR COMPANY, Inc., a Delaware corporation, Defendant and Third-Party Plaintiff, v. JEAN PATOU, INC., Third-Party Defendant.
• Court: U.S. District Court — District of Delaware

313 F. Supp. 915

LA CHEMISE LACOSTE, a French corporation, Plaintiff, v. The ALLIGATOR COMPANY, Inc., a Delaware corporation, Defendant and Third-Party Plaintiff, v. JEAN PATOU, INC., Third-Party Defendant.

Civ. A. No. 3876.

United States District Court, D. Delaware.

June 4, 1970.

Thomas S. Lodge, Connolly, Bove & Lodge, Wilmington, Del., for plaintiff; W. Brown Morton, Jr., and Donal B. Tobin, McLean, Morton & Boustead, Washington, D. C., of counsel.

S. Samuel Arsht and Lewis S. Black, Jr., Morris, Nichols, Arsht & Tunnell, Wilmington, Del., for defendant and third-party plaintiff; Milton Ackman, Strasser, Spiegelberg, Fried & Frank, New York City, of counsel.

OPINION

LAYTON, District Judge.

This case was removed from the Court of Chancery of the State of Delaware by the defendant under 28 U.S.C. § 1441(a). The plaintiff has moved for a remand to the State Court under 28 U.S.C. § 1447(c) for the reasons (1) that there is no federal question presented and, therefore, no jurisdiction to hear the case under § 1441(a) and (2) that the defendant is a Delaware corporation rendering § 1441 (b) applicable. After considering briefs and oral arguments of counsel, I am of the opinion that the matter should not be remanded.

La Chemise Lacoste ("Lacoste"), a French corporation not doing business in Delaware, brought suit against The Alligator Corporation ("Alligator") in the Court of Chancery seeking a declaration that Lacoste owned the common law trademark rights to a reptile figure placed on bottles of toiletry, and an injunction against Alligator from interfering with Lacoste's use of this symbol on toiletries anywhere in the United States. Alligator, a Delaware corporation, has been engaged in the manufacture of raincoats in the United States since around 1909. In its manufacture of raincoats, Alligator adopted the use of a reptile figure which became associated with the Alligator company. Its ownership of the common law trademark rights to this figure was established and it was registered as a federal trademark under the Lanham Act, 15 U.S.C. § 1051 et seq. Lacoste, operating in France, also established as its trademark a reptile figure which was the symbol of its owner, a one-time Davis Cup tennis player of international reputation. Lacoste acquired the French registration of this figure. In the 1950's, Lacoste attempted to import shirts with the reptile figure on them and became involved in a trademark litigation in the federal courts in New York. This ended in a consent order by which David Crystal was permitted to market the Lacoste wearing apparel in the United States with the approval of Alligator.

The present litigation concerns the use of the reptile figure, claimed to be the trademark of both parties, on toiletries manufactured in France and distributed in the United States by Jean Patou. Lacoste has licensed Patou to use the reptile figure in this connection. It has also attempted to register the reptile figure as its trademark with the United States Patent Office on the strength of the French registration. Alligator resisted this application and advised Lacoste that it would sue Patou for any distribution of the toiletries in the United States under the symbol of the reptile. Lacoste's response to this was to seek in the Delaware Court of Chancery a declaratory judgment that it owned the common law trademark for the reptile figure in connection with toiletries and an injunction against Alligator from interfering with the sales of Jean Patou. The Patent Office has suspended its hearings, on a motion by Lacoste, pending the outcome of this suit.

Lacoste's position here has been that there is no federal question presented and, therefore, the suit should be remanded to the Chancery Court. They argue they have no federal rights with regards to the reptile symbol and seek a determination only of common law rights. They contend that Patou has acquired these common law rights to the reptile symbol in connection with toiletries by its sales in the United States. Further, Alligator's federal trademark does not extend to reptile figures on toiletries because Alligator, a manufacturer of raincoats, has never marketed perfume of any kind. Finally, they urge that there was a substantial reason to have its common law rights determined in the State Court; namely, that Patou, the distributor, could not be sued in Delaware and it was one of the deliberate objectives of Lacoste to bring suit where the distributor would not be involved.

The argument of the defendants in support of the Court's removal jurisdiction and against remand rests on two prongs. First, they argue that federal question jurisdiction exists for this suit because Lacoste could have brought its declaratory judgment action in a federal court initially. In a declaratory judgment action to determine whether a federal question is present one must look at the underlying coercive action which is sought to be avoided. Here, Lacoste is seeking to avoid a threatened trademark infringement action and, thus, a federal question is necessarily present. Second, the defendants point to the statement made by Lacoste to the Patent Office requesting a stay on the registration proceedings for the trademark of the reptile symbol in connection with perfume. There Lacoste stated:

"It is submitted that an examination of this Complaint Chancery complaint by this Board will confirm that a determination of the factual and

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