throbber
_
`.
`1‘
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`YOUNG, CLARK & ASSOCIATES, INC.,
`
`Opposer
`
`Application No.: 76/194877
`
`V.
`
`PRIMAVERA TECHNOLOGIES, INC.
`
`Applicant.
`________________)
`
`Mark: PROJECT SUCCESS =
`BUSINESS SUCCESS
`
`Opposition No.: 91151073
`
`OPPOSER’S REQUEST TO RESUME OPPOSITION PROCEEDING
`AND FOR ENTRY OF NEW SCHEDULING ORDER
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Dear Sir or Madam:
`
`On behalf of Opposer Young, Clark & Associates, Inc. (“Opposer”), we
`
`submit this request to resume this opposition proceeding and to enter a new
`
`scheduling order resetting the trial dates.
`
`A.
`
`Opposer Reguests That This Opposition Proceeding Be Resumed
`
`By Order dated April 27, 2004,
`
`the Board suspended this proceeding
`
`pending final disposition of a Civil Action between the parties in the United States
`
`\\|l\\\ll\\\\\\\\\\\\\\\\\\\\\\\\l\\\ll\l\l\\\\ll\
`
`03-04-2005
`
`U.S. Pawn! In TMOICITM Mail RCP‘D‘~ #77
`
`

`
`
`
`District Court for the Northern District of Georgia, pursuant to Trademark Rule §
`
`2.117.
`
`On February 28, 2005, the District Court in the Civil Action entered an
`
`Order which,
`
`inter @, stayed the Civil Action pending a decision in this
`
`proceeding. The Court directed the clerk to administratively close the Civil
`
`Action, with leave for the Plaintiff (the Applicant in this proceeding) to reopen the
`
`Civil Action within sixty (60) days of the Board’s decision in this proceeding. As
`
`summarized by the district court, “[i]n short, the Court stays this litigation pending
`
`a decision by the TTAB.” A copy of the District Court’s Order is appended hereto
`
`as Exhibit A.
`
`Further, in response to the Order, the District Court’s Clerk administratively
`
`terminated the Civil Action on February 28, 2005, as reflected in the District
`
`Court’s Docket Report for the Civil Action, a copy of which is appended hereto as
`
`Exhibit B.
`
`In view of the District Court’s decision and the termination of the
`
`proceedings in the Civil Action, Opposer respectfully requests that the Board
`
`resume this proceeding.
`
`

`
`
`
`B.
`
`Opposer Requests Entry Of A New Scheduling Order Requiring
`Applicant To Respond To Opposer’s Outstanding Discovery Requests
`And Resetting The Trial Dates
`
`Opposer served interrogatories and document requests in this proceeding on
`
`January 20, 2004.‘ Pursuant to Trademark Rule § 2.120, Applicant was required to
`
`respond to Opposer’s discovery requests within thirty days after the service date.
`
`Applicant failed to serve any timely responses to Opposer’s discovery requests,
`
`and to date Applicant has entirely failed to respond to such requests.
`
`Pursuant to the Board’s Order of October 14, 2003, the discovery period in
`
`this proceeding closed on January 19, 2004 and the 30-day testimony period for
`
`Opposer was scheduled to open on March 19, 2004 and close 30 days later on
`
`April 18, 2004. Applicant, however, filed the Civil Action on March 26, 2004, one
`
`week after Opposer’s testimony period opened. Applicant filed its request to
`
`suspend this proceeding on April 7, 2004. By Order dated April 27, 2004, the
`
`Board suspended this proceeding pending final disposition of the Civil Action,
`
`pursuant to Trademark Rule § 2.117. As noted above, on February 28, 2005, the
`
`1 Service of the interrogatories and document requests on January 20, 2004 was
`timely pursuant to Federal Rule of Civil Procedure 6(a) and the Trademark Rules
`because the specified date for the close of discovery, January 19, 2004, was the
`federal Martin Luther King, Jr. holiday. Trademark Rule 2.120(a) specifically
`allows interrogatories and requests for production of documents to be served “on
`or before the closing date of the discovery period as originally set or as reset.”
`
`3
`
`

`
`
`
`District Court stayed and terminated the proceedings in the Civil Action pending
`
`the Board’s decision in this proceeding.
`
`In view of the foregoing, Opposer respectfully requests that the Board enter
`
`a new scheduling order that (1) requires Applicant to provide full and complete
`
`responses to Opposer’s outstanding discovery requests no later than thirty (30)
`
`days after the mailing date of a new scheduling order; (2) schedules Opposer’s
`
`testimony period to close ninety (90) days after the mailing date of a new
`
`scheduling order; and (3) resets the remaining trial dates thereafter in accordance
`
`with the standard timing for same provided under the Trademark Rules.
`
`CONCLUSION
`
`For the reasons set forth above, Opposer respectfully requests that the
`
`present proceedings be resumed and that a new scheduling order be entered in
`
`accordance with the dates suggested by Opposer.
`
`

`
`
`
`I‘
`. r >‘»«
`.
`Respectfully submitted, this
`day of March, 2005.
`z;._.. /Z‘/\
`. ./it
`
`
`Todd Deveau
`
`Georgia State Bar No. 21975
`Dan R. Gresham
`
`Georgia State Bar No. 310280
`THOMAS, KAYDEN, HORSTEMEYER
`& RISLEY, L.L.P.
`100 Galleria Parkway
`Suite 1750
`
`Atlanta, Georgia 30339
`Telephone:(770) 933-9500
`Facsimile: (770) 951-0933
`
`Attorneys for Opposer
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`YOUNG, CLARK & ASSOCIATES, INC.,
`
`Opposer
`
`Application No.: 76/194877
`
`V.
`
`PRIMAVERA TECHNOLOGIES, INC.
`
`Applicant.
`___MM_____)
`
`Mark: PROJECT SUCCESS =
`BUSINESS SUCCESS
`
`Opposition No.: 91 151073
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and correct copy of the above and foregoing
`“OPPOSER’S REQUEST TO RESUME OPPOSITION PROCEEDING AND
`FOR ENTRY OF NEW SCHEDULING ORDER” was served on the following
`counsel of record for the Applicant by first class mail with sufficient postage:
`
`James R. Meyer
`SCHNADER HARRISON SEGAL
`
`& LEWIS LLP
`
`1600 Market Street, Suite 3600
`Philadelphia, PA 19103
`
`This
`
`/3‘
`H day ofMarch, 2005.
`
`9
`
`Q, 74
`.\
`,1‘/'*\.L
`
`Dan R. Gresham
`
`Georgia Bar No. 310280
`
`

`
`

`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF GEORGIA,
`
`ATLANTA DIVISION
`
`'
`
`_
`
`é§I)Z:€f?C%§s/
`
`1"
`, Q?_;’E .)1f_.3513.
`7fiLu£TI-
`
`PRIMAVERA TECHNOLOGIES,
`and PRIMAVERA SYSTEMS,
`
`INC.
`INC ,
`
`§
`E
`
`Hi‘
`
`"“
`/. 1%;
`ihuxafififlmfin
`
`Plaintiffs,
`
`v.
`
`§cIvIL AcTION No.
`§I:o4—cv—o848—JEc
`
`& ASSOCIATES,
`YOUNG, CLARK,
`INc., d/b/a YEA,
`
`Defendant.
`
`O R D E R
`
`This case is presently before the Court on Defendant Young,
`
`Clark & Associates, Inc.'s Motion to Dismiss Pursuant
`
`to Federal
`
`Rule 12(b)(1) or,
`
`in the Alternative,
`
`to Stay this Action [6],
`
`Plaintiffs’ Cross-Motion
`
`for
`
`Summary Adjudication
`
`[9],
`
`AND
`
`Plaintiffs’ Motions
`
`for Oral Argument
`
`[8,9—2].
`
`The Court has
`
`reviewed the record and the arguments of the parties and,
`
`for the
`
`reasons set out below, concludes that Defendant Young, Clark &
`
`Associates,
`
`Inc.'s Motion to Dismiss Pursuant
`
`to Federal Rule
`
`12(b)(1)
`
`[6—1],
`
`should be ~DENIED without prejudice,
`
`but
`
`its
`
`Alternative Motion to Stay this Action [6—2]
`
`should be GRANTED;
`
`Plaintiffs’ Cross—MotiOn for Summary Adjudication [9]
`
`should be
`
`
`
`

`
`
`
`DENIED without prejudice; and Plaintiffs’ Motions for Oral Argument
`
`[8, 9-2] should be DENIED.
`
`BACKGROUND
`
`In this trademark case, plaintiffs Primavera Technologies,
`
`Inc.
`
`and Primavera Systems,
`
`Inc.
`
`seek a declaratory judgment
`
`against defendant Young, Clark & Associates, Inc. Pursuant to the
`
`Declaratory Judgment Act,
`
`28 U.S.C.
`
`§ 2201, plaintiffs seek a
`
`declaration that a particular trademark held by defendant is not
`
`infringed by plaintiffs’ service mark. Plaintiffs further seek an
`
`order from this Court cancelling defendant's trademark as a generic
`
`term precluded from registration pursuant
`
`to 15 U.S.C.
`
`§ 1051.
`
`Defendant has filed a motion to dismiss plaintiffs’ Complaint,
`
`alleging that
`
`this Court
`
`lacks subject matter jurisdiction over
`
`plaintiffs’ claims.
`
`Plaintiff
`
`Primavera Technologies,
`
`Inc. ‘is
`
`a Delaware
`
`corporation with its principal place of business in Wilmington,
`
`Delaware.
`(Compl.
`[1] at fl 2.) Plaintiff Primavera Systems,
`Inc.
`is a Pennsylvania corporation with its principal offices located in
`
`Bala Conoid, Pennsylvania.‘
`
`(Id. at I 3.) Defendant Young, Clark
`
`& Associates,
`
`Inc.
`
`is a Georgia corporation with its principal
`
`place of business in Stone Mountain, Georgia.
`
`-1..
`
`(Id. at I 4.)
`
`refer to the plaintiffs collectively as
`The Court will
`“plaintiffs” or “Primavera.”
`
`
`
`

`
`
`
`Plaintiff Primavera Technologies is the owner of all right,
`
`title, and interest in the service mark PROJECT SUCCESS = BUSINESS
`
`SUCCESS (the “Primavera Service Mark”).
`
`(Id. at T 7.)
`
`Primavera
`
`Technologies has granted Primavera Systems a non—exclusive license
`
`to use the Primavera Service Mark.
`
`(Id.)
`
`Primavera Systems is a
`
`“leading provider
`
`to the business
`
`community of comprehensive
`
`project management software and related services” and uses the
`
`Primavera Service Mark in connection with marketing of its products
`
`and services.
`
`(Id. at T 8.) Since May 2001, Primavera Systems has
`
`used the Primavera Service Mark continuously and extensively in its
`
`marketing and advertising.
`
`(Id. at T 9.)
`
`On
`
`January
`
`17,
`
`2001,
`
`Primavera
`
`Technologies
`
`filed an
`
`application in the United States Patent
`
`and Trademark Office
`
`(“PTO”) for registration of the Primavera Service Mark.
`
`(Id. at T
`
`10.)
`
`A PTO trademark examiner examined the application and
`
`accepted it for publication.
`
`(Id. at T 11.)
`
`The application was
`
`published for opposition in the “Official Gazette of Trademarks” on
`
`October 16, 2001.
`
`(Id.)
`
`Defendant owns United States Trademark No. 2,400,412 for the
`
`service mark SOLUTIONS FOR PROJECT SUCCESS.
`
`(Id. at T 12.)
`
`On
`
`‘December 14, 2001, defendant filed an opposition proceeding with
`
`the PTO Trademark Trial and Appeal Board (“TTAB”).
`
`(Id. at T 13.)
`
`Defendant
`
`opposed plaintiffs’
`
`application to
`
`trademark
`
`the
`
`
`
`

`
`
`
`Primavera Service Mark on the ground that its use in connection
`
`with plaintiffs’ services would be likely to cause confusion in the
`
`minds of the purchasing public and to cause the purchasing public
`
`to assume the services identified by such mark are offered or sold
`
`by defendant or that such services originate with or are in some
`
`way connected with defendant.
`
`(Id.) Defendant contended that it
`
`had adopted and used additional “Project Success” marks,
`
`thereby
`
`creating a
`
`family of narks
`
`including PROJECT SUCCESS
`
`PLANNING
`
`PROCESS,
`
`PROJECT SUCCESS CONTROL PROCESS,
`
`THE PROJECT SUCCESS
`
`METHOD, and PROJECT SUCCESS TOOL KIT.
`
`(Notice of Opp’n at T 7,
`
`attach.
`
`to Mem.
`
`in Supp. of Def. Young, Clark & Assocs.,
`
`Inc.’s
`
`Mot.
`
`to Dismiss Pursuant
`
`to Federal Rule 12(b)(l) or,
`
`in the
`
`Alternative,
`
`to Stay This Action (hereinafter, “Def.’s Mot.
`
`to
`
`Dismiss”)
`
`[6] at Ex. A.)
`
`The TTAB instituted the opposition
`
`proceeding on March 14, 2002.
`
`(Compl.
`
`[1]. at 91 13.)
`
`‘Plaintiffs served their answer in the opposition proceeding on
`
`April 16, 2002.
`
`(Def.’s Mot.
`
`to Dismiss [6] at Ex. B.) Although
`
`plaintiffs
`
`now
`
`seek
`
`cancellation
`
`of
`
`defendant's
`
`trademark
`
`registration for
`
`the mark
`
`SOLUTIONS
`
`FOR
`
`PROJECT
`
`SUCCESS,
`
`plaintiffs’ answer before the TTAB did not assert a counterclaim
`
`attacking the validity of defendant's registration.
`
`(Id.)
`
`After the opposition proceeding began,
`
`the parties requested,
`
`on several occasions,
`
`that the dates for conducting discovery and
`
`
`
`

`
`
`
`presenting testimony to the TTAB be reset so that the parties could
`
`attempt to reach an amicable settlement.
`(Id. at 3.)
`The first
`consent motion to extend discovery and to reschedule testimony
`
`deadlines was filed on September 24, 2002, and it requested that
`
`discovery be extended through November 29, 2002.
`
`(Id. at Ex. C.)
`
`During the extension,
`
`the parties continued their
`
`settlement
`
`discussions and exchanged letters regarding a potential settlement
`
`of the dispute.
`
`(Id. at 4.)
`
`Specifically,
`
`on May
`
`15,
`
`2002, plaintiffs’
`
`counsel
`
`had
`
`telephoned defendant's counsel and offered that plaintiffs would
`
`withdraw their application for the Primavera Service Mark, provided
`
`that defendant would not object to the plaintiffs’ use of the mark
`
`as
`
`an “institutional slogan,” such as appeared on plaintiffs’
`
`magazine to promote its software products.
`
`(Decl. of James R.
`
`Meyer, Esq.
`
`in Supp. of Pls.’ Opp’n to Def. Young Clark & Assocs.,
`
`Inc.’s Mot.
`
`to Dismiss the Compl. and Pls.’ Cross—Mot.
`
`for Summ.
`
`Adjudication [10] at fl 14.) Following the telephone conversation,
`
`plaintiffs’ counsel sent defendant's counsel an example of the
`
`magazine to which he had referred in the conversation.
`
`(Id.)
`
`In a
`
`letter dated ‘October 21,
`
`2002,
`
`defendant
`
`rejected
`
`plaintiffs’ proposal.
`
`(Id. at fl 15 and Ex. A.)
`
`The letter stated
`
`that plaintiffs’
`
`trademark application “describes services that
`
`land squarely within [defendant's] services and now shows an intent
`
`5
`
`

`
`
`
`by Primavera to expand its services to become a direct competitor
`
`of [defendant].”
`
`(Id. at Ex. A.) The letter stated that defendant
`
`had reviewed plaintiffs’ settlement proposal and that defendant
`
`“remains committed to continuing to enforce and maintaining the
`
`rights it asserts in its Notice of Opposition.”
`
`(Id.)
`
`The letter
`
`further stated:
`
`has
`[defendant]
`(4) years,
`than four
`For more
`and
`term “Project Success",
`continuously used the
`variations,
`as
`a brand name
`in connection with its
`
`training, consulting, and systems development services,
`and the marketing of
`its services,
`in the field of
`project
`management,
`differentiating
`[defendant's]
`services from those of its competitors like Primavera.
`These services have been provided throughout the world.
`[Defendant], has
`enforced
`its
`rights,
`successfully
`opposing applications by Jeffrey Phillips and Mark Reed
`seeking to register marks including variations on the
`term “Project Success" in this field.
`
`(Id.)
`
`The
`
`letter concluded that defendant “believes the best
`
`resolution of this matter is for Primavera to either discontinue
`
`use of the mark, which is the subject of the application, or change
`
`its mark so as not
`
`to use both the terms ‘Project’ and ‘Success’
`
`together."
`
`(Id.) Finally, defendant invited plaintiffs to Contact
`
`it at plaintiffs’ earliest convenience “in a good faith effort to
`
`bring this matter to a resolution.”
`
`(Id.)
`
`The parties subsequently agreed.to further extend discovery to
`
`‘allow more time for settlement negotiations and filed a motion with
`
`the TTAB requesting such an extension on November 22,
`
`2002.
`
`A0 72A
`(Hev.8I82)
`
`

`
`
`
`(Def.’s Mot.
`to Dismiss [6] at Ex. D.)
`In an order dated January
`6, 2003, the TTAB,
`instead of extending discovery, simply suspended
`
`the opposition proceeding for six months to allow the parties to
`
`continue their settlement negotiations.
`
`(Id. at Ex. E.)
`
`The parties failed to reach a settlement, and on October 14,.
`
`2003,
`
`the TTAB entered an order resuming the opposition proceeding
`
`and setting a discovery cut-off date of January 19, 2004.
`
`(Id. at
`
`Ex. D.) According to plaintiffs’ counsel, he attempted to Contact
`
`defense counsel
`
`three times in November and December of 2003 to
`
`find out whether defendant
`
`intended to pursue its opposition.
`
`(Decl. of James R. Meyer, Esq.
`
`in Supp. of Pls.' Opp'n to Def.
`
`Young Clark & Assocs., Inc.’s Mot.
`
`to Dismiss the Compl. and Pls.’
`
`Cross-Mot. for Summ. Adjudication [10] at flfl 23-24.) Plaintiffs’
`
`counsel heard no response to these inquiries.
`
`(Id.)
`
`Instead,
`
`defendant served its interrogatories and document requests in the
`
`opposition proceeding on
`
`January 20,
`
`2004.2
`
`(Def.’s Mot.
`
`to
`
`Dismiss [6] at Ex. G.)
`
`V After
`
`defendant
`
`served
`
`its
`
`discovery, Mike
`
`Schomberg,
`
`Primavera
`
`Systems’ Vice President
`
`of Marketing,
`
`received a
`
`from Tom Scruggs, defendant's Vice President of
`telephone call
`
`
`2 As Monday, January 19, 2004, was the federal Martin Luther
`King, Jr. holiday, defendant's service of its discovery requests on
`January 20 was timely under TTAB rules.
`(Def.’s Mot.
`to Dismiss
`[6] at 6 n.2.)
`
`
`
`

`
`
`
`Administration.
`
`(Decl. of Michael Schomberg in Supp. of Pl.’s
`
`Opp’n to Def. Young, Clark & Assocs., Inc.’s Mot.
`to Dismiss the
`Compl.
`[8] at flfl 2, 3.) According to Mr. Schomberg, Mr. Scruggs
`
`advised him that “we feel you infringe our trademark.”
`
`(Id. at fl
`
`3.) Mr. Scruggs allegedly stated, “I'll be reasonable, but
`
`I want
`
`you to ret rid of all references to PROJECT SUCCESS = BUSINESS
`
`SUCCESS messaging.
`
`I would like to see your recommended plan as to
`
`how and when Primavera will stop using it.
`
`I won't ask you to get
`
`rid of it overnight, but I definitely want you to get rid of it."
`
`(Id. at
`
`fl 5.)
`
`By Mr. Schomberg’s account, Mr. Scruggs further
`
`stated that “it does not benefit either of us to get
`
`the lawyers
`
`involved,” which Mr. Schomberg understood to mean that Primavera
`
`would be sued if Mr. Scruggs’ demands were not met.
`
`(Id. at l 6.)
`
`Plaintiffs then filed their Complaint
`
`in this Court on March
`
`26, 2004.
`
`(Compl.
`
`[ll at 1.)
`
`On April 7, 2004, plaintiffs filed
`
`a reguest with the TTAB that the opposition proceeding be suspended
`
`pending the outcome of this case.
`
`(Def.'s Mot.
`
`to Dismiss [6] at
`
`Ex. H.)
`
`In an order dated ‘April 27,
`
`2004,
`
`the TTAB granted
`
`plaintiffs’ request.
`
`(Decl. of James R. Meyer, Esq.
`
`in Supp. of
`
`Pls.’ Opp’n to Def. Young Clark & Assocs., Inc.’s Mot.
`
`to Dismiss
`
`the Compl. and Pls.’ Cross—Mot. for Summ. Adjudication [10] at Ex.
`
`6.)
`
`
`
`

`
`In Count One of its Complaint, plaintiffs seek a declaratory
`
`judgment that their continued use of the Primavera Service Mark and
`
`federal registration of the Primavera Service Mark do not infringe
`
`any rights possessed by defendant and that plaintiffs will not be
`
`held liable for trademark infringement or unfair competition for
`
`the continued use of the Primavera Service Mark.
`
`(Compl.
`
`[1] at i
`
`28.)
`
`In Count Two, plaintiffs seek cancellation of defendant's
`
`United States Trademark No. 2,400,412 because the mark is a generic
`
`term and therefore precluded from registration pursuant
`
`to 15
`
`U.S.C. § 1051.
`
`(Id. at ii 32, 36.)
`
`DISCUSSION
`
`I. Defendant's Motion to Dismiss
`
`A. Rule 12(b)(1) Standard
`
`“Attacks on subject matter jurisdiction come in two forms:
`(1)
`facial attacks, and (2) factual attacks.” Scarfb V. Ginsberg, 175
`F.3d 957, 960 (11th Cir. 1999)
`(citing Lawrence v. Dunbar, 919 F.2d
`
`1525,
`
`1529
`
`(11th Cir. 1990)).
`
`Facial attacks on a complaint
`
`“require the court merely to look and see if the plaintiff has
`
`sufficiently alleged a basis of subject matter jurisdiction, and
`
`the allegations in [plaintiff's] complaint are taken as true for
`
`‘purposes of
`
`the motion.”
`
`Id.
`
`(internal quotation and citation
`
`omitted).
`
`Factual attacks,
`
`on the other hand, “challenge the
`
`existence of subject matter jurisdiction in fact,
`
`irrespective of
`
`A0 72A
`(F§av.8/82)
`
`9
`
`
`
`

`
`
`
`the pleadings, and matters outside the pleadings, such as testimony
`
`(internal quotation and
`‘Id.
`are considered.”
`and affidavits,
`citation omitted).
`If a defendant submits affidavits,
`testimony,
`
`or other evidentiary materials along with his Rule 12(b)(l) motion,
`
`the attack is a factual one. Paterson v. Weinberger, 644 F.2d 521,
`
`523
`
`(5th Cir. May
`
`l98l).3
`
`In this case, defendant
`
`submitted
`
`evidentiary attachments along with its motion, so it has presented
`
`a factual attack on the Court's subject matter jurisdiction.
`
`The Eleventh Circuit has explained that in a factual attack,
`
`the presumption of truthfulness afforded a plaintiff under Rule
`
`12(b)(6) does not attach, and the district court is free to weigh
`
`the evidence.
`
`Scarfo, 175 F.3d at 960.
`
`The Eleventh Circuit has
`
`stated that:
`
`{in a factual attack upon subject matter jurisdiction]
`the trial court may proceed as
`it never could under
`l2(b)(6) or FED. R. Crv. P. 56.
`Because at
`issue in a
`factual l2(b)(1) motion is the trial court's jurisdiction
`——its very power to hear the case——there is substantial
`authority that
`the trial court
`is free to weigh.
`the
`evidence and satisfy itself as to the existence of its
`power
`to hear
`the case.
`In short,
`no presumptive
`truthfulness attaches to plaintiff's allegations, and the
`existence of disputed material facts will not preclude
`the trial court from evaluating for itself the merits of
`the jurisdictional claims.
`
` 3
`
`661 F.2d 1206, 1209 (11th
`In Bonner V. City of Prichard,
`1981)
`(en banc),
`the Eleventh Circuit adopted as binding
`Cir.
`precedent all Fifth circuit decisions handed down prior to the
`close of business on September 30, 1981.
`
`10
`
`
`
`

`
`
`
`Id. at 960-61 (quoting Lawrence, 919 F.2d at 1529).
`
`“When faced
`
`with factual disputes regarding subject matter jurisdiction,
`
`the
`
`district court
`
`serves
`
`as
`
`the fact—finder
`
`and may weigh the
`
`evidence,
`
`provided
`
`that
`
`the
`
`challenge
`
`to
`
`subject matter
`
`jurisdiction does not implicate an element of the cause of action.”
`
`Id. at 961 (citing FED. R. CIV. P. 12(b)(1)(1998)).
`
`Furthermore, “federal courts have the power to order, at their
`
`discretion,
`
`the discovery of facts necessary to ascertain their
`
`competency to entertain the merits."
`
`Eaton V. Dorchester Dev.,
`
`Inc., 692 F.2d 727, 729 (11th Cir. 1982)
`
`(citations omitted).
`
`Such
`
`“jurisdictional discovery is not entirely discretionary,” however.
`
`Id.
`
`“[T]he rules entitle a plaintiff to elicit material through
`
`discovery
`
`before
`
`a
`
`claim may
`
`be
`
`dismissed
`
`for
`
`lack
`
`of
`
`jurisdiction.”
`
`Id. at 731 (citing Blanco V. Carigulf Lines, 632
`
`F.2d 656, 658 (5th Cir. 1980)).
`
`“[D]ismissa1 for lack of subject
`
`matter jurisdiction prior to trial, and certainly prior to giving
`
`the plaintiff ample opportunity for discovery, should be granted
`
`sparingly.”
`
`Id. at 732 n.9 (quoting Chatham Condo. Ass’ns v.
`
`Century Village, Inc., 597 F.2d 1002, 1012 (5th Cir. 1979)).
`
`B. Requirements for Subject Matter Jurisdiction
`
`The statutory authorization for declaratory judgment actions
`
`provides as follows:
`
`
`
`

`
`
`
`In a case of actual controversy within its jurisdiction,
`except with respect to Federal taxes other than actions
`brought under section 7428 of the Internal Revenue Code
`of 1986, a proceeding under section 505 or 1146 of title
`11, or in any civil action involving an antidumping or
`countervailing duty proceeding regarding a class or kind
`of merchandise of a free trade area country (as defined
`in section 516A(f)(10) of the Tariff Act of 1930), as
`determined by the administering authority, any court of
`the United States, upon the filing of an appropriate
`pleading, may declare
`the
`rights
`and other
`legal
`relations
`of
`any
`interested
`party
`seeking
`such
`declaration, whether or not further relief is or could be
`sought.
`Any such declaration shall have the force and
`effect of
`a
`final
`judgment or decree and shall be
`reviewable as such.
`
`28 U.S.C. § 220l(a).
`
`“The operation of the Declaratory Judgment
`
`Act is procedural only.” Household Bank v.
`
`JFS Group, 320 F.3d
`
`1249,
`
`1253
`
`(11th Cir.
`
`2003)
`
`(quoting Aetna Life Ins. Co.
`
`v.
`
`Haworth, 300 U.S. 227, 240 (1937)).
`
`“If there is an underlying
`
`ground for federal court jurisdiction,
`
`the Act ‘allow[s] parties to
`
`precipitate suits that otherwise might need to wait
`
`for
`
`the
`
`declaratory relief defendant
`
`to bring a coercive action.’”
`
`Id.
`
`(quoting Gulf States Paper Corp. v.
`
`Ingram, 811 F.2d 1464, 1467
`
`(11th Cir. 1987)).
`
`The burden of establishing that
`
`the
`
`federal
`
`court has
`
`jurisdiction rests
`
`upon
`
`the plaintiff:
`
`the party asserting
`
`jurisdiction. Kbkkonen V. Guardian Life Ins. Co. of America, 511
`
`‘U.S. 375, 377
`
`(1994)
`
`(citing McNutt V. General Motors Acceptance
`
`Corp., 298 U.S. 178, 182-83 (1936)).
`
`“The determination of whether
`
`12
`
`A0 72A
`(Re'v.8/82)
`
`
`
`

`
`an actual case or controversy exists is determined on a case—by-
`case basis.” GTE Directories Publ’g Corp. V. Trimen America, Inc.,
`67 F.3d 1563, 1567 (11th Cir. 1995)
`(citing Hendrix V. Poonai, 662
`
`F.2d 719, 721~22 (11th Cir. 1981)).
`
`a
`an abstract question and
`The difference between
`“controversy” contemplated by the Declaratory Judgment
`Act
`is necessarily one of degree,
`and it would be
`difficult, if it would be possible,
`to fashion a precise
`test for determining in every case whether there is such
`a controversy. Basically,
`the question in each case is
`whether the facts alleged, under all the circumstances,
`show that
`there is a substantial controversy, between
`parties having adverse legal
`interests, of sufficient
`immediacy and reality to warrant
`the issuance of
`a
`declaratory judgment.
`
`Id.
`
`(quoting Maryland Cas. Co. V. Pacific Coal & Oil Co., 312 U.S.
`
`270, 273 (1941)).
`
`Courts have developed a two—part test to guide the case—or—
`
`controversy analysis in trademark-based declaratory judgment suits:
`
`“First,
`
`the declaratory plaintiff must have a real and reasonable
`
`apprehension of litigation....
`
`Second,
`
`the declaratory plaintiff
`
`must have engaged in a course of conduct which brought it into
`
`adversarial conflict with the declaratory defendant.” Windsurfing
`
`Int’l,
`
`Inc. V.
`
`AMT‘ Inc.,
`
`828 F.2d 755,
`
`757
`
`(Fed. Cir.
`
`1987)
`
`(citations omitted).‘
`
`“The burden is on the declaratory—judgment
`
` ‘
`
`applicable
`the
`is
`this
`that
`agree
`The‘ parties
`The parties have not cited, and
`jurisdictional test in this case.
`the Court is unaware of any Eleventh Circuit authority that would
`compel a different test. Eleventh Circuit law is binding on the
`
`13
`
`
`
`

`
`plaintiff
`
`‘to establish that
`
`jurisdiction over
`
`its declaratory
`
`judgment action existed at, and has continued since,
`
`the time the
`
`complaint was filed.’” Sierra Applied Sciences, Inc. V. Advanced
`
`Energy Indus., Inc., 363 F.3d 1361, 1373 (Fed. Cir. 2004)
`
`(quoting
`
`Int'l
`
`.Med. Prosthetics Research Assocs.,
`
`Inc. V. Gore Enter.
`
`Holdings, Inc., 787 F.2d 572, 575 (Fed. Cir.
`
`l986)).5 Here, only
`
`the first part of the two—part test is at issue.
`
`C. Did plaintiffs have a reasonable apprehension of suit?
`
`“The reasonableness of a party's apprehension is judged using
`
`an objective standard.” Vanguard Research, Inc. V. Peat, Inc., 304
`
`F.3d 1249,
`
`1254
`
`(Fed. Cir. 2002)
`
`(citation omitted).
`
`“A purely
`
`subjective apprehension of an infringement suit is insufficient to
`
`satisfy the actual controversy requirement.”
`
`Indimn Corp. of
`
`America V. Semi-Alloys, Inc., 781 F.2d 879, 883 (Fed. Cir. 1985).
`
`The Court must look for any express charges of infringement, and if
`
`none,
`
`then to the “totality of the circumstances.” Shell Oil Co.
`
`V. Amoco Corp.,
`
`970 F.2d 885,
`
`888
`
`(Fed. Cir.
`
`1992)
`
`(citing
`
`Arrowhead Indus. Water, Inc. V. Ecolochem, InC., 846 F.2d 731, 736
`
`Court in this trademark infringement case.
`
`5 Because declaratory judgment actions involving trademarks
`vare analogous
`to those involving patents,
`the Court may find
`guidance in Federal Circuit patent cases. Windsurfing Int’l Inc.
`V.
`AMI‘
`Inc.,
`828 F.2d 755,
`757
`(Fed. Cir.
`1987)
`(citations
`omitted).
`
`14
`
`
`
`

`
`
`
`(Fed. Cir. 1988)).
`
`“[A]n actual controversy may arise from the
`
`conduct of the parties alone; an express charge of infringement is
`not
`required.8
`Id.
`(citing Goodyear Tire & Rubber Co.
`v.
`
`Releasomers Inc., 824 F.2d 953, 956 (Fed. Cir. 1987)).
`
`Plaintiffs argue that they had a reasonable apprehension of
`
`suit for three reasons:
`
`(1) defendant's conduct during the course
`
`of the opposition proceeding before the TTAB;
`
`(2)
`
`the letter sent
`
`by defense counsel to plaintiffs’ counsel on October 21, 2002; and
`
`(3) defendant's “threats” of suit made by Mr. Scruggs
`
`to Mr.
`
`Schomberg
`
`in early 2004.
`
`(Pls.’ Opp'n
`
`to Mot.
`
`to Dismiss
`
`(hereinafter, “Pls.’ Opp’n”)
`
`[8] at 7.)
`
`First,
`
`some older case law has held that
`
`an opposition
`
`proceeding before the TTAB cannot serve as the basis for reasonable
`
`apprehension of an infringement suit. Red Lobster Inns of America,
`
`Inc. V. New England Oyster House, Inc., 524 F.2d 968, 969 (5th Cir.
`
`1975)
`
`(citing Tilley Lamp Co. v. Thacker, 454 F.2d 805 (5th Cir.
`
`1972) and Brown and Root, Inc. v. Big Rock Corp., 383 F.2d 662 (5th
`
`Cir. 1967)); see also Chesebrough—Pond’s,
`
`Inc. v. Faberge, Inc.,
`
`666 F.2d 393, 396 (9th Cir. 1982); Topp—Cola Co. v. Coca—Cola Co.,
`
`314 F.2d 124, 125-26 (2d Cir. 1963).
`
`Federal courts are thus
`
`‘prohibited from “preempt[ing]
`
`and prejudg[ing]
`
`issues that are
`
`committed for initial decision to an administrative body or special
`
`15
`
`A0 72A
`(Hev.8/82)
`
`
`
`

`
`
`
`tribunal.”
`
`Pub. Serv. Comm’n V. Wycoff Co.,
`
`344 U.S. 237, 246
`
`(1952).
`
`Therefore, defendant's act of filing its opposition before the
`
`TTAB cannot, alone, give plaintiffs a reasonable apprehension of
`
`suit, sufficient
`
`to create a case or controversy.
`
`Plaintiffs
`
`argue, however, that the manner in which defendant conducted itself
`
`during the opposition proceeding has given them a
`
`reasonable
`
`apprehension that defendant will file an infringement suit.
`
`(Pls.’
`
`Opp'n [8] at 11-12.) Specifically, plaintiffs point to what they
`
`characterize as defendant's
`
`“bad—faith failure to respond to
`
`Primavera’s multiple proposals to resolve the dispute outside the
`
`context
`
`of
`
`the
`
`TTAB opposition”
`
`and
`
`to
`
`certain allegedly
`
`contradictory representations that defendant has made to the TTAB
`
`(Id. at 12.)
`
`1 Plaintiffs also complain about
`
`the “timing and
`
`tactics employed by [defendant]
`
`in its conduct of the opposition.”
`
`(Id.)
`
`That the plaintiffs perceive defendants to have behaved in a
`
`non—cooperative fashion during the opposition proceeding before the
`
`TTAB does not, by itself,
`
`lead to a reasonable apprehension that
`
`defendant would file a patent
`
`infringement suit.
`
`That
`
`is,
`
`a
`
`reasonable apprehension of “drawn—out warfare in the trenches” of
`
`the TTAB is an-insufficient basis for a declaratory judgment suit.
`
`Circuit City Stores,
`
`Inc. v. Speedy Car—X,
`
`Inc., No. 3:94CV712,
`
`16
`
`
`
`

`
`
`
`1995 WL 568818, at *6 (E.D. Va. Mar. 27, 1995)
`
`(citing Topp—Cola
`
`the
`Co., 314 F.2d at 125-25). As counter—intuitive as it may seem,
`sparse authority on this subject suggests that tough tactics during
`
`the opposition proceeding do not necessarily suggest
`
`that one’s
`
`adversary will
`
`file a
`
`separate infringement
`
`suit
`
`in federal
`
`district court.
`
`Second, plaintiffs argue that defense counsel's letter to
`
`plaintiffs’ counsel, dated October 21, 2002, constitutes a threat
`
`of litigation.6
`
`(Pls.' Opp’n [8] at 15.) Plaintiffs argue that
`
`the letter charges infringement of defendant's rights, demands that
`
`Primavera cease—and—desist from use of the Primavera Service Mark,
`
`and threatens litigation if Primavera persists.
`
`(Id. at 15——16.)
`
`At least one district court has held that any correspondence
`
`connected to an opposition proceeding before the TTAB cannot form
`
`the basis of reasonable apprehension of suit.
`
`
`Kosmeo Cosmetics,
`
`6 Defendant argues that this letter was written in the context
`of settlement negotiations and is therefore inadmissible under
`Federal Rule of Evidence 408.
`(Def’s Mot.
`to Dismiss
`[6] at
`4
`n.1.) Rule 408 provides that “[e]vidence of conduct or statements
`made in compromise negotiations is ... not admissible.”
`Fed. R.
`Evid. 408. Rule 408 “forbids the introduction of settlement offers
`to prove or disprove liability: however, it explicitly permits the
`introduction of such offers for other purposes.” CNA Fin. Corp. V.
`Brown, 162 F.3d 1334, 1338 (11th Cir. 1998)
`(citing Fed. R. Evid.
`.408).
`Here, plaintiffs are not offering the letter to prove
`defendant's
`liability in the declaratory action but only as
`evidence
`of plaintiffs’
`reasonable
`apprehension of
`suit
`by
`defendant.
`(Pls.’ Opp’n
`[8] at 14-15.)
`Thus,
`the letter is
`admissible for this purpose.
`
`17
`
`
`
`

`
`
`
`Inc. V. Lancome Parfums et Beaute & Cie, No. 4:96cv70, 1996 U.S.
`
`Dist. LEXIS 21770, at *7
`
`(E.D. Tex. Nov. 14, 1996).
`
`“[R]emarks
`
`made during the proceeding will not constitute a threat of an
`
`infringement suit.” Id. at *6 (citing Performance Indus., Inc. v.
`
`Morton Int’l, Inc., 22 U.S.P.Q. 1632 (E.D. Pa. 1992)).
`
`On the other hand, in a case in which the declaratory judgment
`
`defendant wrote a letter stating a prima facie case for trademark
`
`infringement as outlined in 15 U.S.C. § 1114(1) and then filed an
`
`opposition proceeding before the TTAB,
`
`the Ninth Circuit held that
`
`the declaratory judgment plaintiff could reasonably infer a threat
`
`of an infringement action.
`
`Chesebrough—Pond's,
`
`Inc. V. Faberge,
`
`Inc., 666 F.2d 393, 396-97 (9th Cir. 1982).
`
`The court pointed out
`
`the
`the PTO allowing the registration of
`a decision of
`that
`declaratory judgment plaintiff's trademark would not preclude a
`subsequent
`infringement action or be determinative of the issues
`
`involved,
`
`and stated that failing to resolve the dispute would
`
`force
`
`the declaratory judgment plaintiff
`
`to choose
`
`between
`
`and
`continuing to forego competition in a profitable market
`Id.
`entering the market, and thereby risking substantial damages.
`at 397.
`See also Fight for Children,
`Inc. V. Fight Night, Inc.,
`
`_No. 96-1818-LFO, 1997 U.S. Dist. LEXIS 24020, at *3—4
`
`(D.D.C. Mar.
`
`26, 1997)
`
`(where declaratory judgment defendant filed an opposition
`
`proceeding before the TTAB and se

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