United States District Court, E.D. Missouri, Eastern Division
MEMORANDUM AND ORDER STAYING ACTION PENDING STATE
COURT CASE RESOLUTION
D. NOCE UNITED STATES MAGISTRATE JUDGE
December 16, 2016, on motion of defendant, the court
conferred with both parties about the management of this
case. Following this conference, on its own motion, the court
takes up the subject matter jurisdiction of the district
court to decide this case in its current posture. “It
is well established that a court has a special obligation to
consider whether it has subject matter jurisdiction, ”
and it may do so sua sponte where it believes that
jurisdiction may be lacking. Hart v. United States,
630 F.3d 1085, 1089 (8th Cir. 2011); see also Fed.
R. Civ. P. 12(h)(3).
trademark dispute arises out of a 2012 divorce between Randy
Zweifel, the principal of plaintiff Lawn Managers, Inc., and
Linda Smith (formerly Zweifel), the principal of defendant
Progressive Lawn Managers, Inc. (ECF No. 1, ¶¶
6-10). Prior to their divorce, Linda and Randy held equal
ownership interests in plaintiff Lawn Managers, Inc. (ECF No.
30, Ex. 1 at § 5.01). As part of their marital
settlement agreement, Linda and Randy divided their interests
in the plaintiff corporation's residential accounts and
accounts receivables by zip code. (Id. at §
5.02). Linda was awarded the accounts in certain specified
zip codes, and Randy was awarded the accounts in other
specified zip codes. (Id.) Linda agreed to assign
all of her shares in the plaintiff corporation to Randy, who
was permitted to retain the corporate name of "Lawn
Managers, Inc." (Id.)
to the marital settlement agreement, Linda could then
“establish a new lawn care company using the name
Progressive Lawn Managers, Inc. doing business as Lawn
Managers.” (Id. at § 5.06). Linda could
use the name “Lawn Managers” for up to two years
from the date of the divorce, at which time she must
discontinue using the name Lawn Managers, though she would
still be permitted to use the name “Progressive Lawn
Managers, Inc.” (Id.) The divorce was
finalized in May 2012. (Id. at Ex. 1). There have
been a number of contempt motions in the state court based on
alleged breaches of the divorce agreement, as well as motions
to modify the divorce agreement. Following one such dispute
in 2014, the parties agreed to extend Linda's right to
use the name “Lawn Managers” for approximately
six additional months, until Dec. 31, 2014. (ECF No. 30, Ex.
2). They specifically noted that she could continue to use
the name Progressive Lawn Managers, Inc., after that date.
(Id.) Additional motions for contempt and motions to
modify are ongoing.
to the divorce and post-dissolution proceedings, plaintiff
Lawn Managers made certain applications with the United
States Patent and Trademark Office. Before the divorce was
finalized, plaintiff Lawn Managers filed an application to
register its service mark, consisting of the words
“Lawn Managers” within a rectangle atop two
footprints. (ECF No. 1, Ex. 1). This was filed in November
2011, published in May 2012, and registered in August 2012.
(Id.) Then, in February 2015, Lawn Managers filed an
application to register the name “lawn managers.”
(Id.) Registration was granted in October 2015.
February 2016, Lawn Managers brought the instant federal
trademark infringement suit against Progressive Lawn Managers
under the Lanham Act, 15 U.S.C. § 1114, alleging that
defendant's logo was too similar to its own and confusing
consumers because the phrase “Lawn Managers” was
the largest text of the logo. (ECF No. 1).
August, counsel for plaintiff Lawn Managers appeared at a
post-divorce hearing in state court in order to protect
plaintiff's trademark interests. (ECF No. 30, Ex. 4).
That court noted it was not considering anything with regard
to trademark at that time, but “either side could bring
that up in a motion for contempt.” (Id.)
for defendant subsequently asked this court for a
supplemental case management conference to bring the
overlapping nature of these suits to the court's
attention. (ECF No. 30). Defendant has not made any written
or oral jurisdictional motion and plaintiff has requested
that the court require defendant to do so. (ECF No. 32).
However, as noted above, a court may consider on its own
motion whether it has subject matter jurisdiction to decide a
Subject Matter Jurisdiction
alleges that this controversy presents a federal question
over which this court has original subject matter
jurisdiction. (ECF No. 1, ¶ 3) (citing 15 U.S.C. §
1114, 1121 and 28 U.S.C. §§ 1331, 1338, 1367).
While the complaint on its face may present such a question,
there are nevertheless additional principles the court must
consider in determining the justiciability of this case in
federal court. Federal abstention is appropriate here because
of the ongoing nature of the related state court proceedings,
the strong state interest in domestic relations matters and
enforcement of state judgments, and in order to promote wise
and efficient judicial administration.
federal court's obligation to hear and decide a case is
“virtually unflagging, ” federal courts apply
judicially-created abstention doctrines in specific, limited
circumstances. Sprint Communications, Inc. v.
Jacobs, 134 S.Ct. 584, 591 (2013) (citations omitted).
Relevant here are the Younger and Colorado
River forms of abstention. See Colorado River Water
Conservation Dist. v. United States, 424 U.S. 800
(1976); Younger v. Harris, 401 U.S. 37 (1971).
courts apply Younger abstention to avoid interfering
with two kinds of pending state civil cases: (1) enforcement
proceedings and (2) cases involving “certain orders
uniquely in furtherance of the state courts' ability to
perform their judicial functions.” New Orleans
Public Service, Inc. v. Council of City of New Orleans