United States District Court, M.D. Tennessee, Nashville Division
ENCORE FURNITURE THRIFTS AND MORE, LLC, d/b/a DOUBLE TAP TACTICAL, LLC, Plaintiffs,
DOUBLETAP, INC., Defendant
WAVERLY D. CRENSHAW, JR. CHIEF UNITED STATES DISTRICT JUDGE.
before the Court is Defendant's Motion to Dismiss (Doc.
No. 14). For the reasons stated herein, Defendant's
Motion to Dismiss will be granted, and this action will be
dismissed without prejudice.
Furniture Thrifts and More (“Encore”) owns and
operates a retail store in Clarksville, Tennessee, under the
name of “Double Tap Tactical.” Encore sells
tactical gear, gun accessories, military surplus, clothing,
and other related products. Doubletap, Inc.
(“Doubletap”) manufactures and distributes
firearm ammunition under the brand name Doubletap and has
registered trademarks for the name Doubletap Ammunition and
the names of several subcategories of ammunition and bullets.
dispute arose from Encore's alleged unauthorized use of
Doubletap's trademarks, which Doubletap contends has
caused actual consumer confusion. On October 6, 2016,
Doubletap's attorney sent a letter to Encore, demanding
that Encore stop using the Double Tap name in connection with
ammunition and related products. (Doc. No. 24-1.) In
response, Encore's attorney wrote a letter, dated October
25, 2016, to Doubletap's attorney, contending that Encore
was not infringing upon any trademarks of Encore and stating:
“All that said, my client would prefer to resolve this
dispute without the need for litigation.” (Doc. No.
24-2.) Encore asked for clarification as to the specific
extent which Doubletap claimed it should not be allowed to
use the name Double Tap. Id.
filed this declaratory judgment action on November 7, 2016,
but Doubletap argues it did not receive service of the
Complaint until December 13, 2016. Doubletap filed its own
enforcement action in Utah on December 8, 2016. On December
9, 2016, Doubletap's lawyer sent another letter to
Encore's lawyer, further explaining its claims and
stating: “It is clear to Doubletap that your client
does not intend to resolve this dispute without
litigation.” The letter asserted that if its demands
were not met by December 20, 2016, Doubletap would serve its
Utah complaint upon Encore. (Doc. No. 15-5.)
asserts that Doubletap's “baseless and overly broad
and expansive threat of potential liability” created
uncertainty for Encore and its business and, therefore,
Encore filed this action, asking the Court to resolve that
uncertainty through Declaratory Judgment. Encore claims that
an actual controversy exists by way of Doubletap's demand
for Encore to cease and desist use of Encore's business
name and because of the threatened potential liability.
Doubletap has moved to dismiss this action, arguing that
Encore filed it simply for the purpose of “procedural
fencing, ” and that the Court, in its discretion,
should not exercise declaratory judgment jurisdiction.
purposes of a motion to dismiss, the Court must take all of
the factual allegations in the complaint as true.
Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009). To
survive a motion to dismiss, a complaint must contain
sufficient factual matter, accepted as true, to state a claim
to relief that is plausible on its face. Id. A claim
has facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
Declaratory Judgment Act states that in a case of actual
controversy within its jurisdiction, a court may declare the
rights and other legal relations of any interested party
seeking such declaration. 28 U.S.C. § 2201. The central
purpose of the Declaratory Judgment Act is to provide the
opportunity to clarify rights and legal relationships without
waiting for an adversary to file suit. Severe Records,
LLC v. Rich, 658 F.3d 571, 580 (6th Cir.
2011). The Act allows federal courts unique and substantial
discretion in deciding whether to declare the rights of
litigants. Scepter, Inc. v. Metal Bulletin Ltd. 165
F.Supp.3d 680, 686 (M.D. Tenn. 2016).
the Declaratory Judgment Act, the court has discretion
not to hear a declaratory judgment action, even
where jurisdiction exists. Catholic Health Partners v.
Carelogistics, LLC, 973 F.Supp.2d 787, 792 (N.D. Ohio
2013). A plaintiff who files a declaratory judgment action
does not have a right to the forum of his choosing.
Id. “The federal declaratory judgment is not a
prize to the winner of the race to the courthouse.”
Id. Thus, the misuse of the Declaratory Judgment Act
to gain a procedural advantage and preempt the forum choice
of the plaintiff in a coercive action militates in favor of
dismissing the declaratory judgment action. Id.
Sixth Circuit has adopted a five-factor test to assess the
propriety of the federal court's exercise of discretion
in a Declaratory Judgment Act case: (1) whether the judgment
would settle the controversy; (2) whether the declaratory
judgment action would serve a useful purpose in clarifying
the legal relations at issue; (3) whether the declaratory
remedy is being used merely for the purpose of
“procedural fencing” or “to provide an
arena for a race for res judicata;” (4)
whether the use of the declaratory action would increase the
friction between federal and state courts and improperly
encroach on state jurisdiction; and (5) whether there is an
alternative remedy that is better or more effective.
Amsouth Bank v. Dale, 386 F.3d 763 (6th