On August 10, 2012, Judge Lindsay issued an Order (available here) denying Dropbox’s motion to stay a lawsuit filed by Officeware Corp. In the lawsuit, Officeware accuses Dropbox of wrongdoing based on Dropbox’s use of the DROPBOX mark.
In 2009, Dropbox filed a trademark application for the DROPBOX mark and, in 2011, the USPTO published the application for opposition. Officeware and two other companies initiated proceedings before the Trademark Trial and Appeal Board (“TTAB”) opposing registration of the mark. Officeware then filed this lawsuit.
Dropbox moved to stay the case pending resolution of the trademark opposition proceedings. Judge Lindsay found that the doctrine of primary jurisdiction did not justify a stay:
The doctrine of primary jurisdiction is a “judge-made doctrine” that “comes into play when a court and an administrative agency have concurrent jurisdiction over the same matter, and no statutory provision coordinates the work of the court and of the agency.” Mercury Motor Express, Inc. v. Brinke, 475 F.2d 1086, 1091-92 (5th Cir.1973). “The doctrine operates, when applicable, to postpone judicial consideration of a case to administrative determination of important questions involved by an agency with special competence in the area. It does not defeat the court’s jurisdiction over the case, but coordinates the work of the court and the agency by permitting the agency to rule first and giving the court the benefit of the agency’s views.” Id. (citation omitted).
Several circuits have held that the rule of primary jurisdiction does not justify a federal court’s deferral to a proceeding before the TTAB. See, e.g., Goya Foods, Inc. v. Tropicana Products, Inc., 846 F.2d 848 (2d Cir. 1988); PHC, Inc. v. Pioneer Healthcare, Inc., 75 F.3d 75 (1st Cir. 1996); Rhoades v. Avon Products, Inc., 504 F.3d 1151 (9th Cir. 2007). . . . In the case sub judice, Officeware’s action against Dropbox involves the following claims: infringement of Officeware’s common law rights in the Design; unfair competition based on Dropbox’s use of a confusingly similar image to Officeware’s Design; infringement of Officeware’s common law rights in the Mark; unfair competition based upon Dropbox’s unauthorized used of the Mark; dilution under the Texas Business and Commerce Code; injunctive relief; unjust enrichment; and damages and attorney’s fees. The only claim before the TTAB is the registrability of the Mark. . . . The instant case involves issues far beyond the issue of registrability. Regardless of the TTAB’s decision, this court would still have to determine the infringement issue independently. As the board cannot afford complete relief for Officeware’s claims, the court determines that a stay is not warranted under the facts and circumstances of this case.
Additionally, Judge Lindsay ruled that Officeware would suffer prejudice by a stay, given that the median length of proceedings before the TTAB is 184 weeks. And, although Dropbox “express[ed] concern over the multi-party nature of the TTAB proceedings[,]” Judge Lindsay “remind[ed] the parties of Federal Rules of Civil Procedure 19, 20, and 24, and . . . direct[ed] the parties to proceed as required under these rules.”
Officeware is represented by Robert Ward, Andrew Howard, Craig Florence, and Terrell Miller, all of Gardere Wynne Sewell LLP.
Dropbox is represented by Steve Schortgen, Jennifer Ayers, and John Patton, all of K&L Gates LLP; and David Kramer, Evan Stern, John Slafsky, all of Wilson Sonsini Goodrich & Rosati.