Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA712591
`ESTTA Tracking number:
`12/04/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92060915
`Plaintiff
`Snow Ball's Chance, Ltd.
`MARK EDW ANDREWS
`ANDREWS ARTS & SCIENCES LAW LLC
`7104 COLISEUM ST
`NEW ORLEANS, LA 70118-4818
`UNITED STATES
`mea@mealaw.com, docket@artsciencelaw.com, artsciencelaw@gmail.com
`Motion to Reopen
`Mark Edw. Andrews
`mea@mealaw.com, docket@artsciencelaw.com, artsciencelaw@gmail.com
`/Mark Edw. Andrews/
`12/04/2015
`MotionResume_CAJUN-RED-HOT.pdf(401362 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`

`United States Patent & Trademark Office
`Trademark Trial & Appeal Board
`
`Cancellation No. 92060915
`
`Registration No. 4,157,906
`
`CAJUN RED HOT
`
`Registered 12-JUN-2012
`
`Snow Ball’s Chance, Ltd.
`
`v.
`SnoWizard, Inc.
`
`Motion to Resume
`
`Petitioner Snow Ball’s Chance, Ltd., moves to resume this cancellation proceeding in light of the
`
`dismissal of the civil action in US District Court that was the basis for suspension.
`
`In an Order and a Judgment entered 25 September 2015, the US District Court for the Louisiana
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`Eastern District dismissed all of Plaintif SnoWizard’s claims, and dismissed Civil Action 15-1002
`
`in its entirety, under Rule 12, on the motion of Defendant Snow Ball’s Chance, Ltd. The Order and
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`the Judgment are appended here. SnoWizard, Inc. did not move for any reconsideration and did
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`not give notice of any appeal during the allowed delays, which have already run.
`
`Petitioner directs the Board’s attention to potentially related Cancellation No. 92060914, WHITE
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`CHOCOLATE & CHIPS, between the same parties. Petitioner directs the Board’s attention to a
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`potentially related cancellation proceeding between the same parties which was iled 3-DEC-2015
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`and was assigned the tracking number ESTTA712483, against Reg. No. 3,543,583 for MOUNTAIN
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`MAPLE.
`
`Dated: 4 December 2015
`
`—Certificate of Service—
`I, Mark Edw. Andrews, certify this
`document is served on counsel for Registrant
`SnoWizard, Inc. Kenneth L. Tolar by U.S.
`Mail to 2908 Hessmer Av, Ste 2,Metairie, LA
`70002, and by e-mail to <tolar@tolarlawoffice.
`com>, this 4 December 2015.
`
`Respectfully submitted:
`Attorney for Petitioner Snow Ball’s Chance, Ltd.
`
`______________________________
`
`Mark Edw. Andrews
`La. Bar No. 26172
`Andrews Arts & Sciences Law llc
`7104 Coliseum St., New Orleans, LA 70118
`504-383-3632
`mea@mealaw.com
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`
`
`11
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 22 Filed 09/25/15 Page 1 of 1
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF LOUISIANA
`
`SNOWIZARD, INC.
`
`VERSUS
`
`SNOW BALL'S CHANCE, LTD.
`
`CIVIL ACTION
`
`NO. 15-1002
`
`SECTION “G”(1)
`
`In accordance with the Court’s Order1 entered on September 25, 2105,
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`JUDGMENT
`
`IT IS ORDERED, ADJUDGED AND DECREED that there be judgment in favor of the
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`defendant, Snow Ball's Chance, Ltd., and against the plaintiff, SnoWizard, Inc., dismissing plaintiff's
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`claims.
`
`New Orleans, Louisiana, this
`
`25th
`
` day of September 2015.
`
`_____________________________________
`NANNETTE JOLIVETTE BROWN
`UNITED STATES DISTRICT JUDGE
`
`1
`
`Rec Doc. 21.
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit A, p.1
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 1 of 33
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF LOUISIANA
`
`SNOWIZARD, INC.
`
`CIVIL ACTION
`
`VERSUS
`
`CASE NO. 15-1002
`
`SNOW BALL’S CHANCE, LTD.
`
`SECTION: “G”(1)
`
`ORDER
`
`In this litigation, SnoWizard, Inc. (“SnoWizard”) seeks a judgment “(1) declaring that
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`SnoWizard, Inc. continues to own a valid and enforceable federally registered trademark in ‘CAJUN
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`RED HOT®’ and ‘WHITE CHOCOLATE & CHIPS®,[’] as the court and jury in the consolidated
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`cases previously determined; (2) that Defendant is barred by the doctrine of res judicata from
`
`attacking the validity of the registered trademarks CAJUN RED HOT® and WHITE CHOCOLATE
`
`& CHIPS®; (3) ordering the Trademark Trial and Appeal Board [(“TTAB”)] to dismiss pending
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`cancellation proceedings nos. 92060914 and 92060915 filed by Defendant; (4) attorneys’ fees, costs,
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`expenses, interest and any further relief as the Court deems just or equitable under the
`
`circumstances.”1 Pending before the Court is Snow Ball’s Chance’s “Motion to Dismiss and Strike
`
`Under Rule 12”2 in which it urges the Court to dismiss the “Complaint for Declaratory Judgment
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`of Trademark Validity”3 filed by SnoWizard. Having reviewed the motion, memorandum in support,
`
`memorandum in opposition, the supplemental memoranda, the record, and the applicable law, the
`
`Court will grant the motion.
`
`1 Rec. Doc. 1 at p. 18.
`
`2 Rec. Doc. 8.
`
`3 Rec. Doc. 1.
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.1
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 2 of 33
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`I. Background
`
`On February 20, 2015, Snow Ball’s Chance filed two petitions for the cancellation of the
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`trademarks “CAJUN RED HOT” and “WHITE CHOCOLATE & CHIPS” with the United States
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`Patent and Trademark Office’s Trademark Trial and Appeal Board.4 On April 1, 2015, SnoWizard
`
`filed a complaint seeking a declaratory judgment in this Court, requesting that the Court declare that
`
`it continues to own valid and enforceable federally registered trademarks for the snowball flavors
`
`“CAJUN RED HOT” and “WHITE CHOCOLATE & CHIPS.”5
`
`SnoWizard’s ownership of valid and enforceable trademarks for these snowball flavors was
`
`decided by a jury empaneled by this Court in Southern Snow Manufacturing Company, Inc. v.
`
`SnoWizard Holdings, Inc. et al., Case No. 06-9170.6 In 2006, Southern Snow Manufacturing Co.,
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`Inc. (“Southern Snow”), filed a Petition and a Supplementing and Amending Petition, in the 24th
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`Judicial District Court of the Parish of Jefferson, Louisiana, against SnoWizard for violation of the
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`Louisiana Unfair Trade Practices Act and U.S. trademark law.7 SnoWizard subsequently removed
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`that case to the United States District Court for the Eastern District of Louisiana, invoking federal
`
`question jurisdiction pursuant to 28 U.S.C. § 1331.8 Southern Snow, along with other plaintiffs,
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`subsequently filed three amended complaints bringing additional claims, including claims under
`
`4 Rec. Docs. 1-4; 1-5.
`
`5 Rec. Doc 1 at p. 18.
`
`6 S. Snow Mfg. Co., Inc. v. SnoWizard Holdings, Inc. et al, Case No. 06-9170, Rec. Doc. 665; Rec. Doc.
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`709-1.
`
`7 Id. at Rec. Doc. 1-1.
`
`8 Id. at Rec. Doc. 1.
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.2
`
`2
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 3 of 33
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`Louisiana state trademark law and civil RICO statutes.9 SnoWizard asserted counterclaims against
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`Southern Snow for infringement and dilution of multiple asserted state and federal trademarks,
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`unfair competition under federal and state law, and patent infringement.10 After more than six years
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`of litigation, the matter was tried before a jury in this Court beginning on February 19, 2013.11 Of
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`particular relevance to the instant case, the jury in that matter found that SnoWizard possessed
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`federally registered trademarks for “CAJUN RED HOT” and “WHITE CHOCOLATE & CHIPS,”
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`and the Court issued its Judgment on Jury Verdict accordingly.12 The plaintiffs in that action
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`appealed that judgment to the United States Court of Appeals for the Federal Circuit, and the Federal
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`Circuit subsequently affirmed this Court’s verdict concerning SnoWizard’s ownership of the
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`trademarks.13 The plaintiff’s petition to the United States Supreme Court for a writ of certiorari was
`
`denied.14
`
`On February 20, 2015, over a year after this Court issued its final judgment affirming the
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`validity of SnoWizard’s trademarks,“CAJUN RED HOT” and “WHITE CHOCOLATE & CHIPS,”
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`the entity named Snow Ball’s Chance, a snowball vendor that was not a party to the prior litigation,15
`
`9 Id. at Rec. Docs. 113; 167; 412.
`
`10 Id. at Rec. Docs. 38; 168; 414.
`
`11 Id. at Rec. Doc. 654.
`
`12 Id. at Rec. Docs. 661-3 at 14–20; 665 (“18. IT IS ORDERED, ADJUDGED, AND DECREED that
`judgment is rendered in favor of SnoWizard, Inc. . . . declaring that SnoWizard, Inc. owns a valid and enforceable
`federally registered trademark in CAJUN RED HOT . . . [and] WHITE CHOCOLATE & CHIPS.”).
`
`13 Id. at Rec. Doc. 734 at p. 17.
`
`14 Rec. Doc. 1 at p. 6.
`
`15 SnoWizard claims that Snow Ball’s Chance is in privity with the parties in the prior litigation because
`Snow Ball Chance’s counsel, Mark Andrews, who was also counsel to the parties in the prior suit, is “simply
`recruiting parties who have no interest whatsoever in the trademarks at issue, or in any of the other issues in the
`consolidated cases, in order to re-litigate by proxy unsuccessful claims and issues on behalf of Southern Snow and
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.3
`
`3
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 4 of 33
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`filed two petitions with the TTAB for the cancellation of SnoWizard’s trademarks “CAJUN RED
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`HOT” and “WHITE CHOCOLATE & CHIPS.”16 According to SnoWizard, “in response to [Snow
`
`Ball’s Chance’s] [] petitions for cancellations,” it then filed a complaint in this Court requesting that
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`the Court affirm the validity of the trademarks through a declaratory judgment action.17 The
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`complaint requested judgment in its favor:
`
`1) declaring that SnoWizard, Inc. continues to own a valid and enforceable federally
`registered trademark in “CAJUN RED HOT®” and “WHITE CHOCOLATE &
`CHIPS®, [”] as the court and jury in the consolidated cases previously determined;
`2) that Defendant is barred by the doctrine of res judicata from attacking the validity
`of the registered trademarks CAJUN RED HOT® and WHITE CHOCOLATE &
`CHIPS®; 3) ordering the Trademark Trial and Appeal Board to dismiss pending
`cancellation proceedings nos. 92060914 and 92060915 filed by Defendant; 4)
`attorneys’ fees, costs, expenses, interest and any further relief as the Court deems just
`or equitable under the circumstances.18
`
`In response, Snow Ball’s Chance filed a motion to dismiss SnoWizard’s complaint for declaratory
`
`relief.19 SnoWizard filed its opposition on June 9, 2015.20 The TTAB has stayed the cancellation
`
`proceedings pending the outcome of the instant action.21
`
`II. Parties’ Arguments
`
`A.
`
`Snow Ball’s Chance’s Arguments in Favor of Dismissal
`
`Snow Ball’s Chance moves to dismiss this action under Federal Rule of Civil Procedure
`
`Snow Ingredients.” Id. at p. 8. As will be explained infra, the Court need not reach the issue of privity.
`
`16 Rec. Docs. 1-4; 1-5.
`
`17 Rec. Doc. 1 at p. 18.
`
`18 Id.
`
`19 Rec. Doc. 8.
`
`20 Rec. Doc. 14.
`
`21 Rec. Doc. 8-1 at p. 1.
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.4
`
`4
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 5 of 33
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`12(b)(1) for lack of subject matter jurisdiction as well as under 12(b)(6) for failure to state a claim
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`upon which relief can be granted.22 Snow Ball’s Chance also moves to strike the pages of
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`SnoWizard’s complaint that discuss allegations regarding the prior litigation as well as allegations
`
`against attorney Andrews under Federal Rule of Civil Procedure 12(f).23
`
`Snow Ball’s Chance contends that the Court does not have jurisdiction over this case and
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`therefore the claims should be dismissed pursuant to Federal Rule of Civil Procedure 12(b)(1)
`
`because neither the Declaratory Judgment Act nor the case law supply a cause of action.24 Moreover,
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`Snow Ball’s Chance asserts that injunctive and declaratory judgment remedies are discretionary and
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`“short-circuiting and preempting a properly instituted federal-agency proceeding by filing a
`
`declaratory-judgment action is improper and unfavored.”25 Additionally, Snow Ball’s Chance argues
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`that the Court does not have jurisdiction, as alleged by SnoWizard, under 15 U.S.C. § 1071(b)
`
`because that statute provides only for an appeal of a final determination by the TTAB.26 Snow Ball’s
`
`Chance contends that there has been no final determination in either of the two TTAB cancellation
`
`proceedings because those proceedings have been stayed pending the outcome of this case.27
`
`Therefore, Snow Ball’s Chance contends that the proper forum for SnoWizard’s claim is not in the
`
`District Court, but instead in the TTAB proceedings, where SnoWizard can make the same
`
`22 Id. at pp. 7–8.
`
`23 Id. at p. 8.
`
`24 Id. at p. 1.
`
`25 Id. at pp. 4,7.
`
`26 Id. at p. 3.
`
`27 Id.
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.5
`
`5
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 6 of 33
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`arguments it has made in the instant action.28 Snow Ball’s Chance contends that, even assuming the
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`Court has jurisdiction to hear the claims and even if a claim had been properly stated against Snow
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`Ball’s Chance, the Court could still exercise its discretion under the Declaratory Judgment Act to
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`dismiss the case.29
`
`Snow Ball’s Chance also argues that the complaint should be dismissed pursuant to Federal
`
`Rule of Civil Procedure 12(b)(6) because the only allegation against Snow Ball’s Chance is “the
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`unsubstantiated assertion that Snow Ball’s Chance was ‘recruited’ ‘in order to re-litigate by
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`proxy.’”30 Snow Ball’s Chance contends, however, that even that allegation was not specifically
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`pled but rather only an implied allegation.31 Snow Ball’s Chance argues that because all of
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`SnoWizard’s claims are against entities that are not in privity with Snow Ball’s Chance, SnoWizard
`
`has failed to state an actionable claim against it.32
`
`Finally, Snow Ball’s Chance argues that allegations in the complaint regarding the prior
`
`litigation and allegations of barratry made against attorney Andrews should be stricken under
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`Federal Rule of Civil Procedure 12(f).33 Snow Ball’s Chance contends that the pages of allegations
`
`about the prior litigation are immaterial to this litigation as they pertain to different parties and that
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`the accusations against attorney Andrews are “immaterial, impertinent, and scandalous.”34
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`28 Id. at pp. 3–4.
`
`29 Id. at p. 4.
`
`30 Id. at p. 4.
`
`31 Id. at pp. 4–5.
`
`32 Id at p. 5.
`
`33 Id. at p. 8.
`
`34 Id.
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.6
`
`6
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 7 of 33
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`B.
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`Plaintiff’s Arguments in Opposition
`
`SnoWizard asserts that the Court has subject matter jurisdiction over this case pursuant to
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`28 U.S.C. § 1338(a), which provides for jurisdiction over trademark claims, 15 U.S.C. § 1121(a),
`
`which provides for jurisdiction for claims under the Lanham Act, and under the doctrine of ancillary
`
`jurisdiction.35 Additionally, SnoWizard contends that it has stated a claim under the Declaratory
`
`Judgment Act, arguing that the case involves a “definite and concrete dispute” because the petitions
`
`for cancellation filed before the TTAB leave “no uncertainty” that Snow Ball’s Chance seeks to
`
`offer the trademarked items in exactly the same manner that the Court found constituted
`
`infringement in the Judgment on Jury Verdict.36 Lastly, SnoWizard argues that the allegations Snow
`
`Ball’s Chance seeks to strike are questions of fact which “cannot be decided on motion to strike.”37
`
`SnoWizard contends that 28 U.S.C. § 1338(a) provides for original jurisdiction over civil
`
`actions arising under Acts of Congress relating to trademarks and 15 U.S.C. § 1121(a) provides for
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`original jurisdiction over all actions arising under the Lanham Act.38 SnoWizard contends that the
`
`Court has subject matter jurisdiction in this case because it brings a claim pursuant to the Lanham
`
`Act and the Lanham Act provides that federal courts have concurrent jurisdiction with the TTAB
`
`over issues relating to the registration and cancellation of trademarks. Here, SnoWizard seeks a
`
`judgment “declaring the validity and enforceability of the federally registered Marks, declaring
`
`SnoWizard’s rights to the federal registrations of the Marks, and ordering the TTAB to dismiss
`
`35 Rec. Doc. 14 at p. 3.
`
`36 Id. at pp. 8–9.
`
`37 Id. at p. 15.
`
`38 Id. at p. 3.
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.7
`
`7
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 8 of 33
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`Snow Ball’s Chance’s petitions for cancellation.”39 SnoWizard contends that the Court’s Judgment
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`on Jury Verdict is enforceable against Snow Ball’s Chance as the “agent or proxy” of Southern
`
`Snow and Snow Ingredients.40 Therefore, it asserts that the motion to dismiss pursuant to Federal
`
`Rule of Civil Procedure 12(b)(1) should be denied.41
`
`SnoWizard additionally asserts that the Court has ancillary jurisdiction to interpret and
`
`enforce its own prior judgment under the precedent of Royal Insurance Co. of America v. Quinn-L
`
`Capital Corp.42 SnoWizard argues that Snow Ball’s Chance’s petitions for cancellation in the TTAB
`
`would “‘effectively nullify’ the Judgment on Jury Verdict by purporting to reverse this Court’s
`
`orders therein declaring that SnoWizard’s registrations of the Marks are valid and enforceable.”43
`
`Furthermore, it argues that “in the event the TTAB were to grant [Snow Ball’s Chance’s] petition
`
`and cancel SnoWizard’s registration of the Marks, and if [Snow Ball’s Chance] then were to attempt
`
`to use the Marks on or in connection with its snowball flavorings . . . then arguably [Snow Ball’s
`
`Chance] would be in violation of this Court’s Order dated April 24, 2014 in the Consolidated Cases
`
`enjoining Southern Snow, Snow Ingredients, ‘and those persons in active concert or participation
`
`with them...’ from using the Marks.”44
`
`Next, SnoWizard contests the motion to dismiss under Federal Rule of Civil Procedure
`
`39 Id. at p. 4.
`
`40 Id. at p. 13.
`
`41 Id. at p. 2.
`
`42 960 F.2d 1286 (5th Cir. 1992).
`
`43 Rec. Doc. 14 at p. 5.
`
`44 Id. (emphasis in original) (citing S. Snow Mfg. Co., Inc. v. SnoWizard Holdings, Inc. et al, Case No. 06-
`9170, Rec. Doc. 732).
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.8
`
`8
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 9 of 33
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`12(b)(6), arguing that it has sufficiently pled a cause of action under the Declaratory Judgment Act
`
`by demonstrating that there is a case or controversy.45 SnoWizard asserts that, like in Starter Corp.
`
`v. Converse,46 cited by the Fifth Circuit as an example of a trademark dispute suitable for declaratory
`
`judgment, there is “no uncertainty” that Snow Ball’s Chance seeks to offer the trademarked items
`
`in exactly the same manner the Court found to infringe the marks in the Judgment on Jury Verdict.47
`
`SnoWizard further contends that the Court should not exercise its discretion under the Declaratory
`
`Judgment Act to dismiss this action.48 It asserts that the Fifth Circuit in Sherwin-Williams Co. v.
`
`Holmes County49 identified several factors for courts to consider in deciding whether to exercise
`
`their discretion to dismiss and none of those factors are present in this case.50 SnoWizard argues,
`
`inter alia, that there is no pending state action, only cancellation proceedings in the TTAB,
`
`SnoWizard did not engage in forum shopping, and retaining the lawsuit in this Court would serve
`
`the purposes of judicial economy.51
`
`Finally, SnoWizard argues that the allegations Snow Ball’s Chance seeks to strike are
`
`questions of fact which “cannot be decided on motion to strike.”52
`
`45 Id. at pp. 6–9.
`
`46 84 F.3d 592 (2d Cir. 1996).
`
`47 Rec. Doc. 14 at pp. 8–9.
`
`48 Id. at pp. 9–10.
`
`49 343 F.3d 383, 388 (5th Cir. 2003).
`
`50 Rec. Doc. 14 at pp. 9–10.
`
`51 Id. at pp. 10–12.
`
`52 Id. at p. 15.
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.9
`
`9
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 10 of 33
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`C.
`
`Parties’ Arguments in Supplemental Memoranda
`
`On September 10, 2015, the Court ordered the parties to provide additional briefing, citing
`
`relevant authority, on the following issue: whether, where this is a final judgment on an issue, such
`
`as a trademark infringement, the case presents a justiciable issue before the Court where the
`
`Declaratory Judgment Act claim is pending, pursuant to the Declaratory Judgment Act and Article
`
`III of the United States Constitution.53
`
`In its supplemental memorandum, SnoWizard asserts that Snow Ball’s Chance has created
`
`an actual case or controversy under the Declaratory Judgment Act by filing a cancellation
`
`proceeding with the TTAB.54 SnoWizard cites Ranir, LLC v. Dentek Oral Care, Inc.,55 arguing that
`
`the court in that case found a declaratory judgment action seeking a declaration that the defendant
`
`is barred by claim preclusion from a future lawsuit to be a case or controversy under the Declaratory
`
`Judgment Act.56 Citing City of El Paso, Texas v. El Paso Entertainment, Inc.,57 SnoWizard also
`
`contends that the Fifth Circuit has previously determined that a district court has ancillary
`
`jurisdiction “when, as is the case here, the parties seek to determine their respective rights under a
`
`prior judgment.”58 Furthermore, SnoWizard contends that “a controversy exists as to whether the
`
`defendant is a mere proxy of Southern Snow that would be bound by the previous judgments” and
`
`that SnoWizard’s defenses of claim preclusion, issue preclusion, and res judicata also raise a
`
`53 Rec. Doc. 18.
`
`54 Rec. Doc. 19 at p. 2.
`
`55 No. 1:09-cv-1056, 2010 WL 3222513 (W.D. Michigan Aug. 16, 2010).
`
`56 Rec. Doc. 19 at p. 4.
`
`57 382 F. App’x 361 (5th Cir. 2010).
`
`58 Rec. Doc. 19 at p. 3.
`
`10
`
`Cancellation No. 92060915, CAJUN RED HOT
`
`Exhibit B, p.10
`
`

`

`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 11 of 33
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`justiciable controversy.59 SnoWizard also asserts that the case should remain in this Court as a matter
`
`of judicial economy, arguing that pursuant to 15 U.S.C. § 1071(b), “a party to a cancellation
`
`proceeding who is dissatisfied with the decision of the Trademark Trial and Appeal Board may
`
`appeal by filing a civil action in the U.S. district court.”60
`
`In response to the Court’s request for additional briefing, Snow Ball’s Chance cites Goya
`
`Foods, Inc. v. Tropicana Products, Inc.,61 and asserts that the court in that case found that there was
`
`an actual case or controversy because there was a trademark infringement claim in the TTAB
`
`proceedings.62 Snow Ball’s Chance asserts that the instant case is distinguishable because Snow
`
`Ball’s Chance does not bring a claim for infringement.63 Snow Ball’s chance also contends that a
`
`registered trademark can become generic and that “earlier proceedings have no preclusive effect
`
`against unrelated parties, presenting new theories and evidence of genericness, at a later point in
`
`time.”64
`
`III. Law and Analysis
`
`A.
`
`Legal Standard on Motion to Dismiss for Lack of Subject Matter Jurisdiction
`
`Federal courts have “limited jurisdiction and cannot entertain cases unless authorized by the
`
`Constitution and legislation.”65 A motion to dismiss for lack of subject matter jurisdiction must be
`
`59 Id. at pp. 4–5.
`
`60 Id. at p. 6.
`
`61 846 F.2d 848 (2d Cir. 1988).
`
`62 Rec. Doc. 20 at p. 1.
`
`63 Id.
`
`64 Id. at p. 2.
`
`65 Kokkonen v. Guardian Life Ins. Co., 511 U.S. 375, 377 (1994).
`
`11
`
`Cancellation No. 92060915, CAJUN RED HOT
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`Exhibit B, p.11
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`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 12 of 33
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`granted if the court lacks statutory authority at any time to hear and decide the dispute.66 In fact, “[i]t
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`is well-settled that subject matter jurisdiction can be raised at any time or even sua sponte by the
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`court.”67 The party that invokes the court’s jurisdiction bears the burden to allege with sufficient
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`particularity the facts creating jurisdiction and to support the allegation if challenged.68 Thus, “[t]he
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`burden of proof for a Rule 12(b)(1) motion to dismiss is on the party asserting jurisdiction.”69
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`B.
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`Declaratory Judgment Act
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`SnoWizard seeks a declaratory judgment declaring that (1) “SnoWizard, Inc. continues to
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`own a valid and enforceable federally registered trademark in ‘CAJUN RED HOT®’ and ‘WHITE
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`CHOCOLATE & CHIPS®’ as the Court and jury in the consolidated cases previously determined;”
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`(2) Snow Ball’s Chance is barred by the doctrine of res judicata from attacking the validity of the
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`trademarks; and (3) ordering the TTAB to dismiss the pending cancellation proceedings nos.
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`92060914 and 92060915.70 The Court previously issued a final judgment declaring the trademarks
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`“CAJUN RED HOT” and “WHITE CHOCOLATE & CHIPS” to be valid and enforceable.71
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`66 FED. R. CIV. P. 12(h)(3).
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`67 Johnston v. United States, 85 F.3d 217, 218 n.2 (5th Cir. 1996) (citing Houston v. United States Postal
`Serv., 823 F.2d 896, 902 (5th Cir. 1987), cert denied, 485 U.S. 1006 (1988)); see also Gonzalez v. Thaler, 132 S. Ct.
`641, 648 (2012) (“When a requirement goes to subject-matter jurisdiction, courts are obligated to consider sua
`sponte issues that the parties have disclaimed or have not presented.”).
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`68 Diefenthal v. Civil Aeronautics Bd., 681 F.2d 1039, 1052 (5th Cir. 1982) (citing St. Paul Mercury
`Indemn. Co. v. Red Cab Co., 303 U.S. 283, 287 n.10 (1938)).
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`69 Ramming v. United States, 281 F.3d 158, 161 (5th Cir. 2001) (citing McDaniel v. United States, 899 F.
`Supp. 305, 307 (E.D. Tex. 1995)).
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`70 Rec. Doc. 1 at p. 18.
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`71 S. Snow Mfg. Co., Inc. v. SnoWizard Holdings, Inc. et al, Case No. 06-9170, Rec. Doc. 665; Rec. Doc.
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`709-1.
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`Cancellation No. 92060915, CAJUN RED HOT
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`Exhibit B, p.12
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`12
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`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 13 of 33
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`SnoWizard now seeks a second judgment declaring their validity and enforceability.72
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`The Declaratory Judgment Act, codified at 28 U.S.C. § 2201, provides:
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`(a) In a case of actual controversy within its jurisdiction, . . . 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.73
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`In evaluating whether to decide or dismiss a declaratory judgment action, a federal district court
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`must determine: “(1) whether the declaratory action is justiciable; (2) whether the court has the
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`authority to grant declaratory relief; and (3) whether to exercise its discretion to decide or dismiss
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`the action.”74
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`1. Whether the Declaratory Judgment Action is Justiciable
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`The Supreme Court has held that the Declaratory Judgment Act’s requirement of an actual
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`case or controversy derives not only from the statutory language itself, but also from Article III of
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`the Constitution, which confines the federal courts to adjudicating actual cases and controversies.75
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`In order to be justiciable, the controversy must be “definite and concrete, touching the legal relations
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`of parties having adverse legal interests,” and it must be a “real and substantial controversy
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`admitting of specific relief through a decree of a conclusive character, as distinguished from an
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`opinion advising what the law would be upon a hypothetical state of facts.”76 In order to be
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`72 Rec. Doc. 1 at p. 18.
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`73 28 U.S.C. § 2201.
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`74 Sherwin-Williams Co. v. Holmes Cnty., 343 F.3d 383, 387 (5th Cir. 2003).
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`75 U.S. CONST. art. III; Aetna Life Ins. Co. of Hartford, Conn., v. Haworth, 300 U.S. 227, 239–40 (1937).
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`76 Aetna Life Ins. Co. of Hartford, Conn., 300 U.S. at 240–41.
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`13
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`Cancellation No. 92060915, CAJUN RED HOT
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`Exhibit B, p.13
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`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 14 of 33
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`justiciable, there must be some “useful purpose to be achieved” in deciding the issue.77
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`There is not a great deal of authority on the issue of justiciability in a declaratory judgment
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`action where the declaratory judgment sought concerns the validity of a former judgment. One case
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`that discusses this issue is the Fifth Circuit decision in Board of Commissioners for Buras Levee
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`District v. Cockrell.78 In Cockrell, the plaintiff sought a declaratory judgment declaring that a former
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`judgment was a “complete and conclusive bar” to any claim by the defendant of title to or interest
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`in any portion of certain lands.79 On appeal, the Fifth Circuit stated that it “greatly doubt[ed] whether
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`[the case presented] an ‘actual controversy,’” because “[t]here seem[ed] to be [] only a difference
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`of opinion as to the scope of [the] former decree . . . ” (which presumably would not be a justiciable
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`issue).80 However, because neither party challenged the district court’s finding “that there [was] an
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`actual controversy, and since relief might have been had by a bill to quiet title,” the Fifth Circuit
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`reviewed the merits of the appeal.81
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` Here, SnoWizard does not even appear to be asking the Court to decide the scope of a prior
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`judgment, but rather to reaffirm its own prior judgment. Therefore, it appears even clearer here than
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`in Cockrell, that there is no live, real case or controversy to be litigated before this Court and no
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`“useful purpose to be achieved” in declaring once again that “CAJUN RED HOT” and “WHITE
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`77 Pub. Serv. Comm’n of Utah v. Wycoff Co. Inc., 344 U.S. 237, 244 (1952).
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`78 91 F.2d 412 (5th Cir. 1937).
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`79 Id. at 413.
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`80 Id. at 413–14.
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`81 Id. at 414.
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`Cancellation No. 92060915, CAJUN RED HOT
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`Exhibit B, p.14
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`14
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`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 15 of 33
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`CHOCOLATE & CHIPS” are valid and enforceable federally registered trademarks.82 Like in
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`Cockrell, however, SnoWizard asks the Court to apply the judgment to a third party, which it asserts
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`is in privity with the parties to the prior suit. SnoWizard asks this Court to declare that Snow Ball’s
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`Chance is barred by the doctrine of res judicata from attacking the validity of SnoWizard’s
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`trademarks in “CAJUN RED HOT” and “WHITE CHOCOLATE & CHIPS.” As the Fifth Circuit
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`expressed, although in dicta, in Cockrell, such a request does not constitute an actual case or
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`controversy.83
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`SnoWizard argues that there is a justiciable controversy because it has a res judicata defense
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`in the TTAB proceedings based upon a final judgment of this Court.84 In support, SnoWizard cites
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`an unpublished district court case from the Western District of Michigan, Ranir, LLC v. Dentek Oral
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`Care.85 In Ranir, LLC, the defendant had previously filed a lawsuit against the plaintiff’s predecessor
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`for false advertising, unfair competition, and injurious falsehood under state law, which was
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`dismissed with prejudice for failure to prosecute.86 After receiving notice that the defendant intended
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`to file a new complaint against plaintiff for false advertising, the plaintiff filed suit seeking a
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`declaratory judgment that defendant was barred by res judicata and/or collateral estoppel from
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`82 Citing Starter Corporation v. Converse, 84 F.3d 592 (2d Cir. 1996), SnoWizard argues that there is an
`actual case or controversy because there is “no uncertainty” that Snow Ball’s Chance seeks to offer “CAJUN RED
`HOT” and “WHITE CHOCOLATE & CHIPS” snowball flavors. Rec. Doc. 14 at p. 8. SnoWizard has failed to
`show, however, how this fact creates a case or controversy under the Declaratory Judgment Act for this Court to
`declare the validity of its prior judgment.
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`83 Cockrell, 91 F.2d at 413– 14.
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`84 Rec. Doc. 19 at pp. 4–5.
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`85 Id. at p. 4.
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`86 No. 1:09-cv-1056, 2010 WL 3222513, at *1 (W.D. Michigan Aug. 16, 2010).
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`Cancellation No. 92060915, CAJUN RED HOT
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`Exhibit B, p.15
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`15
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`Case 2:15-cv-01002-NJB-SS Document 21 Filed 09/25/15 Page 16 of 33
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`litigating those claims.87 The court did not address whether the case was justiciable, and found that
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`plaintiff had stated a plausible claim for claim preclusion.88
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`The Court does not find this case persuasive. The court’s discussion in Ranir, LLC was
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`focused on whether the plaintiff had stated claims for issue and claim preclusion. It does not appear
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`that the issue of justiciability was even raised. Furthermore, this case is not analogous because
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`SnoWizard is asking this Court, based on its prior judgment, to enjoin the proceedings before the
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`TTAB, where different issues are being raised.
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`SnoWizard additionally claims, in its complaint, that Snow Ball’s Chance’s filing of petitions
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`for cancellation in the TTAB created an actual case or controversy entitling SnoWizard to seek a
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`declaration of its rights.89 The mere filing of a claim before the TTAB does not automatically create
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`a case or controversy that can be adjudicated in a district court. In Red Lobster Inns of America, Inc.
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`v. New England Oyster House, Inc.,90 the Fifth Circuit upheld the trial court’s finding that there was
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`no actual controversy, as requir