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W & G TENNESSEE IMPORTS v. ESSELTE PENDAFLEX CORP.

January 23, 1991

W & G TENNESSEE IMPORTS, INC.
v.
ESSELTE PENDAFLEX CORPORATION



The opinion of the court was delivered by: NIXON

 JOHN T. NIXON, UNITED STATES DISTRICT JUDGE

 The Court is in receipt of the plaintiff's motion to place this case on the retired docket pending completion of related administrative proceedings, its memorandum in support thereof, and the defendant's memorandum in opposition.

 Facts

 The present controversy arises over the right to sell rectangular retail price labels whose side edges contain a sinuous curve (hereinafter "wavy-edged labels.") The defendant Esselte Pendaflex Corporation ("Esselte") is the owner of United States Trademark Registration No. 1567060 for the wavy-edged labels, and on June 27, 1990 it sent the plaintiff W & G Tennessee Imports, Inc. ("Tennessee Imports") a letter requesting that it cease and desist its use of the wavy edge labels.

 On July 25, 1990 Tennessee Imports brought this action for a declaratory judgment under 28 U.S.C. § 2201, asking the Court to decide the following four questions:

 
1. Whether the . . . rolls of adhesive labels sold by Tennessee Imports are capable of trademark protection by Esselte.
 
2. Whether the trademark registered by Esselte is wholly and obviously distinguishable from the rolls of adhesive labels sold by Tennessee imports in that the trademark and rolls of labels are so different in texture, function, size, appearance and use that there is no possibility of confusing them in the mind of the public. *fn1"
 
3. Whether the trademark registered by Esselte is common and descriptive, rather than original and fanciful and is thereby of limited distinctiveness.
 
4. Whether the trademark registered by Esselte has no secondary meaning indicating its origin and was in use by Tennessee imports and others through the sale of rolls of labels for many years prior to registration by Esselte and was thereby in the public domain.

 In its answer Esselte brought counterclaims against Tennessee Imports for trademark infringement under Section 32(1) of the Lanham Act, for false designation of origin under Section 43(a) of the Lanham Act, for dilution under Section 47-25-512 of the Tennessee state code, and for unfair competition under the common law of the State of Tennessee.

 On October 26, 1990 Tennessee Imports filed a petition with the Trademark Trial and Appeal Board (hereinafter "TTAB"), a branch of the United States Patent and Trademark Office, asking the TTAB to cancel Esselte's trademark registration for the wavy edged label. Because the validity of Esselte's trademark is one of the issues which Tennessee Imports asked this Court to decide, Tennessee Imports has now asked this Court to stay all proceedings until the TTAB has made a determination concerning Tennessee Import's petition.

 Conclusions of Law

 The doctrine of primary jurisdiction states that when a court is faced with a question requiring the exercise of administrative discretion, it should allow the appropriate federal administrative agency to rule on the issue when possible. See Cavanagh Communities Corp. v. New York Stock Exchange, 422 F. Supp. 382, 385-86 (S.D.N.Y. 1976). The doctrine is flexible and discretionary, and courts normally examine the facts of each particular case when deciding whether or not it should be applied. C-Cure Chemical Co., Inc. v. Severe Adhesives Corp., 571 F. Supp. ...


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