ST. LOUIS — A federal judge recently decided to keep a trademark dispute case over two companies in the town of Festus in his court.
In his nine-page opinion issued April 27, U.S. District Court Judge Henry Edward Autrey denied a defense motion to throw out the case based on lack of jurisdiction.
Autrey favored arguments by the plaintiff in the case that his court has jurisdiction. He also granted the defendant 60 days to retain new counsel.
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The trademark dispute is between plaintiff Pippin Towing and Recovery and defendant Mr. Pippin's Truck Service, both operating in Festus, is a town of about 11,600, according to the 2010 census.
Pippin Towing and Recovery, which has done business since 1954, was acquired in 2012 by Rachel Fisher, who also started the truck service company, "Pippin Truck Service," according to the background portion of Autrey's opinion. Pippin Truck Service is not a named party in the case.
Defendant Mr. Pippin's Truck Service was organized in September 2018 and is owned by Cletus Pippin Jr.
Neither Fisher nor Cletus Pippin are named parties in the case.
In the complaint filed in July, Pippin Towing & Recovery maintained that the name of Cletus Pippin Jr.'s truck service company is "patently confusingly similar to that of plaintiff's and plaintiff's Pippin mark."
"In doing so, defendant and Cletus Pippin, Jr. had the specific intent of trading on plaintiff's Pippin mark, causing confusion," the complaint continued.
The nine-page complaint alleges false designation of origin, and common law unfair competition and service mark infringement and asked for a a permanent injunction. The complaint, among other things, asked for actual and punitive damages, and all of Mr. Pippin's Truck Service's profits.
The complaint also argued that Autrey's court has jurisdiction as an action for false designation of origin under the Lanham Act, "and for common law unfair competition and trademark infringement under the laws of the State of Missouri." The complaint also based the court's jurisdiction on Cletus Pippin Jr.'s residency in the district "and the events giving rise to the claims made herein occurred in this judicial district," the complaint said.
Mr. Pippin's Truck Service argued the court lacked jurisdiction under the Lanham "and would therefore lack supplemental jurisdiction over plaintiff's state law claim for unfair competition and service mark infringement as well," Autrey's opinion said.
Autrey found that Mr. Pippin's Truck Service's argument for dismissal, based on Pippin Towing and Recovery's website "is significantly outweighed" by the plaintiff's claim that Pippin Towing and Recovery engages in interstate commerce, the opinion said.
"In light of the finding that the court possesses federal question jurisdiction, it also has supplemental jurisdiction over plaintiff’s state claim for unfair competition and service mark infringement," the opinion said.