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Bell v. Accumetric, LLC

United States District Court, N.D. Texas, Dallas Division

July 30, 2019

RICHARD BELL, Plaintiff,
v.
ACCUMETRIC, LLC, Defendant.

          MEMORANDUM OPINION AND ORDER

          BARBARA M. G. LYNN, CHIEF JUDGE.

         Before the Court is Defendant's Motion to Dismiss for Lack of Jurisdiction. [ECF No. 7]. Plaintiff contests that there is a controversy sufficient to give the Court subject matter jurisdiction. For the foregoing reasons, the Motion is DENIED.

         I. Legal Standard

         Plaintiff Richard Bell owns the pending application for the trademark “THE BOSS, ” Application No. 87, 354, 791 (the “BOSS Mark”). [Complaint, ECF No. 1 ¶ 6]. He also owns the trademark “THE BOSS BUILDERS OUTLET SUPER STORE WWW.SHOPTHEBOSS.COM” and the related images, Registration No. 5, 254, 215 (the “BOSS Graphic Mark”). [Id. ¶ 7]. Both trademarks are for use in connection with retail building supply store services featuring home improvement products. [Complaint Ex. D at 5; Complaint Ex. E at 2].

         Defendant Accumetric, LLC owns the trademark “BOSS, ” Registration No. 2, 354, 288, for use in connection with adhesives related to construction, furniture, stationary, household, and general use sealant products (the “‘288 Mark”). [Complaint Ex. C at 2]. On October 25, 2017, Defendant initiated an opposition proceeding before the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office, alleging that the BOSS Mark was “confusingly similar” to the ‘288 Mark. [Complaint Ex. F at 13].

         On April 28, 2018, Defendant sent Plaintiff a settlement offer, stating that it would continue its TTAB opposition proceeding, and also initiate a separate TTAB cancellation proceeding against the Boss Graphic Mark, unless Plaintiff:

■ Withdrew the application for the BOSS Mark;
■ Surrendered the BOSS Graphic Mark;
■ Limited any future use of “BOSS” to the full name of the business-"THE BOSS BUILDERS OUTLET SUPER STORE”-and the current geographic footprint of the single location at 2416 Merrell Road, Dallas, Texas;
■ Did not sell any adhesives, sealants, or glues under any mark containing the word “BOSS, ” including “THE BOSS” and “SHOP THE BOSS”; and
■ Discontinued use of www.shoptheboss.com and adopted a new domain name that did not contain the word “BOSS.”

         [Complaint ¶ 10].

         The parties could not reach a settlement, and Defendant continued the opposition proceeding. [Motion to Dismiss at 4-5]. On November 8, 2018, Defendant informed Plaintiff that it would be filing a motion for summary judgment and asked if Plaintiff would consider withdrawing the trademark application to avoid continued litigation. [Samantha Quimby Decl., ECF No. 7-1 at 6]. When Plaintiff then asked for “a formal detailed and reasonable settlement proposal, ” Defendant indicated that it had already sent its “best offer for a global settlement, which [Plaintiff] rejected” and that it would be pursuing summary judgment. [ Id. at 4]. Defendant filed its motion for summary judgment in the opposition proceeding on November 19, 2018, and Plaintiff then filed this declaratory judgment action on December 12, 2018. [Motion to Dismiss at 5; Complaint ¶ 11].

         I. ...


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