Fluidless Non-Tact Lenses v. Klear Vision Con. Lens Sp.

• Decision Date: 30 January 1958
• Parties: FLUIDLESS NON-TACT LENSES, Inc., Donald L. Golden, d/b/a Fluidless Contact Lens Center, and Fluidless Contact Lens Laboratories, Inc., Plaintiffs, v. KLEAR VISION CONTACT LENS SPECIALISTS, Inc., Defendant.
• Court: U.S. District Court — Southern District of New York

158 F. Supp. 145

FLUIDLESS NON-TACT LENSES, Inc., Donald L. Golden, d/b/a Fluidless Contact Lens Center, and Fluidless Contact Lens Laboratories, Inc., Plaintiffs, v. KLEAR VISION CONTACT LENS SPECIALISTS, Inc., Defendant.

United States District Court S. D. New York.

January 30, 1958.

Paskus, Gordon & Hyman, New York City, for plaintiffs (Lenard H. Mandel, New York City, of counsel).

Harry Price, New York City, for defendant.

THOMAS F. MURPHY, District Judge.

Plaintiffs move for an order remanding this cause to the Supreme Court, New York County, from whence it was removed on defendant's petition.

Defendant's petition stated: "The allegations and claims in this proceeding relate to a cause of action coming directly under Section 43(a) of the Lanham Act, and it is the contention of the complaint that there has been a usage of false designation of origin or false description or representation including the word or words Non-Tact used as a trademark and in a corporate name which gives rise to a cause of action falling squarely within the original jurisdiction of the Federal Court under this section of the Lanham Act."

It is the plaintiffs' position that the complaint reveals no basis for federal jurisdiction and that the cause of action set forth in the complaint is predicated on a claim of common-law trademark and an exclusive right to use the name "Non-Tact" lenses to distinguish their lenses. Plaintiffs claim that defendant is violating this right and competing unfairly with them. In short plaintiffs' position is that there is no federal jurisdiction under the allegations of their complaint or that even if there might be jurisdiction they are relying on a common-law right rather than one that may be granted by the Lanham Act (15 U.S. C.A. § 1125(a)) and in so framing their complaint there is no basis for removal jurisdiction.

Plaintiffs are correct and the motion is granted, and the cause remanded with costs.

An analysis of the complaint upon which removal jurisdiction must be based is as follows:

Plaintiffs allege that since December, 1956, they have "adopted the word `Non-Tact' to distinguish the type of contact lenses manufactured and sold by the plaintiffs, and that from that time until the present have continued to use that word orally, in correspondence and in advertising to distinguish plaintiffs' contact lenses;" that plaintiffs have advertised their lenses and the distinguishing phrase "Non-Tact" in the newspapers of several large cities, in a nationally distributed newspaper, and via a direct mail advertising campaign. Plaintiffs claim that they have created a goodwill in connection with the name and they are entitled to its exclusive use. It is further alleged that defendant is in the business of selling contact lenses, "has embarked upon a course of conduct calculated to misappropriate for its own benefit plaintiffs' distinguishing name `Non-Tact' and to apply the same to defendant's contact lenses," and has "committed various wrongful acts by which the public is likely to be deceived and misled into believing that the contact lenses offered for sale by the defendant are, in fact, plaintiffs' `Non-Tact' lenses." In furtherance of "said wrongful plan", plaintiffs allege, defendant has applied to the Trade Mark Office to...