United States District Court, W.D. Pennsylvania
MAZCON, A KURTZ BROS. CO., LLC, Plaintiff,
BEG GROUP LLC, and JOSEPH GRECO, Defendants.
Motion for Preliminary Injunction
MEMORANDUM OPINION WITH FINDINGS OF FACT AND
CONCLUSIONS OF LAW
PARADISE BAXTER, UNITED STATES DISTRICT JUDGE.
before this Court is Defendants' motion for preliminary
injunction [ECF No. 29] seeking to enjoin Plaintiff from
prosecuting two Petitions for Cancelation at the United
States Patent and Trademark Office ("USPTO"). Oral
argument on the motion was held on October 30,
February 15, 2019, Plaintiff Mazcon, a Kurtz Brothers
Company, an industry leader in sediment control, initiated
this civil action. ECF No. 1. As Defendants to this action,
Plaintiff names the BEG Group LLC, a direct competitor, and
its President Joseph Greco.
parties sell competing products and each accuses the other of
sowing confusion in the market. Plaintiff raises four
separate legal claims: Count I - False Advertising under the
Lanham Act, 15 U.S.C. § 1125(A); Count II - Fraudulent
Registration under the Lanham Act, 15 U.S.C. § 1120;
Count III -Misappropriation of Trade Secrets; and Count IV -
Unfair Competition. ECF No. 1. Defendants filed an Answer and
a Counterclaim against Plaintiff: Count I - Trademark
Infringement under the Lanham Act, 15 U.S.C. § 1114;
Count II - Unfair Competition under both the Lanham Act, 15
U.S.C. § 1125 and at common law; and Count III
-Trademark Infringement at common law. ECF No. 7.
September 23, 2019, Plaintiff Mazcon filed two Petitions for
Cancelation with the USPTO. These Petitions seek the
cancelation of the federal registrations on Defendants'
trademarks BIG SWITCH and THE BIG SWITCH. Defendants have
filed a motion for preliminary injunction, seeking to enjoin
Plaintiff from prosecuting both Petitions for Cancelation.
The present dispute between the parties, on this motion for
preliminary injunction, arises out of the applicability of
the "first filed rule" and whether based on this
case being the first filed, the Petitions for Cancelation at
the USPTO should be stayed. Although there are four counts in
the complaint and arguably four counts in the counterclaim,
the gist of the complaint as it relates to the pending motion
for preliminary injunction is only cancelation of the mark
THE BIG SWITCH.
Standard of Review on Motion for First-filed Injunction
"first-filed rule" allows a district court "to
enjoin the prosecution of 'proceedings of the same
parties and the same issues' in a court of coordinate
jurisdiction." Specialty Insurance Agency, Inc. v.
Walter Kaye Associates, Inc., 1989 WL 65618, at *2 (D.
NJ. Jun.7, 1989) quoting E.E.O.C. v. University of
Pennsylvania, 850 F.2d 969, 971 (3d Cir.
explained by the Third Circuit: The first-filed rule
encourages sound judicial administration and promotes comity
among federal courts of equal rank. It gives courts 'the
power' to enjoin the subsequent prosecution of
proceedings involving the same parties and the same issues
already before another district court." Phoenix
Insurance Co. Ltd. v. Teva Pharmaceutical Industries
Ltd., 381 F.Supp.3d 416, 419 (E.D. Pa. Feb. 22, 2019)
quoting E.E.O.C. v. Univ. of Pa., 850 F.2d 969, 971
(3d Cir. 1988). "[A]lthough a 'first-filed
injunction is technically directed at the parties, the order
is tantamount to exercising a coordinate court's power to
control its own cases." Specialty Ins. Agency, 1989 WL
656218, at *2.
may enjoin the parties "from proceeding in a
subsequently-filed suit where (a) the court has jurisdiction,
(b) the suit in whose favor the injunction is sought was
filed first, (c) the issues are the same, (d) the parties are
the same, (e) parallel litigation will mean duplicate
expenditures of judicial effort and the possibility of
inconsistent judgments, and (e) the injunction will not aid
the movant in an inequitable strategy or work an
impermissible hardship on one or more of the
parties." Specialty Ins. Agency, 1989 WL 65618, at
*5, quoting A. O. Smith Corp. v. F.T.C., 530 F.2d
515, 525 (3d Cir. 1976).
this standard of review in mind, the Court makes Findings of
Fact and Conclusions of Law granting the motion for
preliminary injunction. See Federal Rule of Civil
Findings of Fact
instant action was filed in this Court on February 15, 2019.
Plaintiff Mazcon and Defendant BEG Group are direct
competitors in the sediment control industry.
Joseph Greco is an officer and director of BEG.
Greco owns Registration No. 5, 306, 024 ('024) for the
mark THE BIG SWITCH. As part of the present lawsuit, Mazcon
seeks cancelation of the trademark registration for THE BIG
SWITCH. The relief sought in the complaint is very broad but
does include a specific request that the Commissioner of the
USPTO be directed to cancel '024 for THE BIG SWITCH.
See ECF No. 1, pages 36-37 ("(g) Order that
Defendants committed fraud in procuring and maintaining
trademark registration No. 5, 306, 024 for the mark THE BIG
SWITCH by making and maintaining false, material
representations of fact in connection with a trademark
application with the intent to deceive the U.S. Patent and
Trademark Office and award Plaintiff damages associated with
misleading customers regarding the same; (h) Order the
Commissioner of the USPTO to cancel trademark registration
No. 6, 306, 024 [THE BIG SWITCH] consistent with this
Defendants BEG Group and Mr. Greco filed a counterclaim
claiming that Mazcon has infringed on its valid trademark of
THE BIG SWITCH through Mazcon's sale of SWITCH SOCK. As
relief, Defendants seek "the abandonment of Mazcon's