THOMPSON MEDICAL v. NATIONAL CENTER OF NUTRITION

• Decision Date: 31 August 1989
• Docket Number: No. 89 Civ. 3095 (CSH).,89 Civ. 3095 (CSH).
• Citation: 718 F. Supp. 252
• Parties: THOMPSON MEDICAL COMPANY, INC., Plaintiff, v. NATIONAL CENTER OF NUTRITION, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

718 F. Supp. 252

THOMPSON MEDICAL COMPANY, INC., Plaintiff, v. NATIONAL CENTER OF NUTRITION, INC., Defendant.

No. 89 Civ. 3095 (CSH).

United States District Court, S.D. New York.

August 31, 1989.

Curtis, Mallet-Prevost Colt & Mosle, New York City, for plaintiff; Eliot Lauer, Daniel R. Lenihan, Miriam K. Harwood, of counsel.

Fitzpatrick, Cella, Harper & Scinto, New York City, for defendant; Lawrence F. Scinto, William D. Stokes, Alexandria, Va., of counsel.

MEMORANDUM OPINION AND ORDER

HAIGHT, District Judge:

This is a federal trademarks case in which state law claims are also asserted. Plaintiff Thompson Medical Company, Inc. ("Thompson") is a New York corporation maintaining its principal place of business in New York City. Since 1978 Thompson has marketed and sold in retail stores nationwide a line of meal replacement diet products under the registered trademark SLIM-FAST. In early 1988 Thompson introduced and began to market a related product called Ultra SLIM-FAST. These products are advertised together as well as individually. The labels are nearly identical, and they are sold side-by-side on retail store shelves.

Defendant National Center of Nutrition, Inc. ("NCN") is a Virginia corporation with its principal place of business within that state. NCN owns the registered trademark ULTRAFAST on protein-sparing, modified dietary food supplement products and weight loss programs. NCN's weight loss program is physician supervised. NCN sells the program exclusively to physicians and hospitals. The physicians and hospitals then administer the program. NCN's ULTRAFAST products and programs are not available to consumers in retail stores.

In April 1989 NCN mailed letters to Thompson and three of Thompson's major consumers, the nationwide store chains of Walgreen Drugs, Fantles's Drugstore, and Giant Food. NCN claimed in those letters that Thompson's mark Ultra SLIM-FAST infringed upon NCN's ULTRAFAST trademark. NCN demanded that Thompson and all three chain stores cease and desist from selling Ultra SLIM-FAST and that the stores remove the product from their shelves. NCN also stated that unless the stores complied with those demands, they would be named as co-defendants in legal actions commenced by NCN against Thompson.

Reacting to those letters, Thompson filed in this Court on May 5, 1989 an action for declaration of non-infringement. Thompson also asserted claims for damages for unfair competition, trade disparagement and tortious interference with contract as a result of NCN's allegedly false and threatening letters to Thompson's customers.

On June 9 1989, NCN filed an action in the Eastern District of Virginia against Thompson and the Fantle and Giant Food store chains for trademark infringement.

The case is now before this Court on Thompson's motion for an order enjoining what it characterizes as NCN's duplicative action in the Eastern District of Virginia; and NCN's cross-motion under Rule 12(b)(2), F.R.Civ.P., to dismiss Thompson's action against it for lack of personal jurisdiction.

The relief Thompson seeks on its motion, an order staying NCN's second-filed Virginia action, is a form of preliminary injunctive relief to which Thompson is not entitled unless it demonstrates in this Court personal jurisdiction over NCN. Beacon Enterprises, Inc. v. Menzies, 715 F.2d 757 (2d Cir.1983).

If personal jurisdiction over NCN exists, then Thompson is clearly entitled to that injunctive relief. Thompson filed its action in this Court one month before NCN filed an action involving the identical issue of infringement vel non in Virginia. An action for declaratory judgment of non-infringement is a recognized trademark remedy. See, e.g., Carter-Wallace, Inc. v. Ever-Dry Corporation, 290 F.Supp 735 (S.D.N.Y.1968) (Mansfield, J.). It is the settled law of this circuit that where there are two competing lawsuits, the first suit should have priority, absent the showing of balance of convenience or special circumstances giving priority to the second. First City National Bank and Trust Company v. Simmons, 878 F.2d 76, 79 (2d Cir.1989), and cases cited. NCN in its briefs does not suggest the existence of any circumstances taking the case at bar outside that rule. To implement the rule, the court of first filing has the equitable power to stay the second-filed suit, even in another...