Opinion · Court of Appeals for the Second Circuit

Kaufman & Ruderman, Inc. v. Cohn & Rosenberger

Kaufman & Ruderman, Inc. v. Cohn & Rosenberger, 177 F.2d 849 (2d Cir. 1949)

Type
Opinion
Court
Court of Appeals for the Second Circuit
Jurisdiction
Federal
Date
1949-11-15
Topic
general

How later courts describe this case

  • appeal decided on merits, with permission granted to seek Rule 54(b) certification, nunc pro tunc

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KAUFMAN RUDERMAN v. COHN ROSENBERGER,177 F.2d 849(2nd Cir. 1949)
KAUFMAN RUDERMAN, Inc. v. COHN ROSENBERGER.
No. 56, Docket 21422.
United States Court of Appeals, Second Circuit.
Argued October 11, 1949.
Decided November 2, 1949.
Supplemental Opinion November 15, 1949.
Plaintiff and defendant are New York corporations. The complaint contains two causes of action.

(1) In the first, plaintiff alleges: In 1928, plaintiff registered its trade-mark, "KARU," for costume jewelry, in the United States Patent Office, under Registration No. 247,662.

On September 18, 1941, plaintiff filed and application for registration of "KARU" in another form. Defendant, having previously secured federal registrations of the trade-mark "CORO" in a number of forms for use with costume jewelry, filed a notice of opposition in the Patent Office, asserting a conflict and confusing similarity between the two marks. The Examiner of Trade-Marks sustained defendant's opposition, and on appeal the Commissioner of Patents affirmed that decision. Plaintiff now asks that, under 35 U.S.C.A. § 63, the court order the Commissioner of Patents to register plaintiff's mark in accordance with its application of September 18, 1941.

(2) In the second cause of action, plaintiff claims that defendant has asserted to "the public" and "the trade" that plaintiff has been infringing a number of defendant's trademarks, "CORO," which are registered in the Patent Office. Plaintiff asks for a judgment declaring that its mark No. 247,622 is valid, that it does not conflict with any of defendant's federally-registered marks, and that plaintiff infringes on none of those marks. Plaintiff also asks an injunction against defendant's making further allegations of infringement to "the public" and "the trade."

Conceding federal jurisdiction of the first cause of action, defendant answered it on the merits. But defendant moved to dismiss the second cause of action on these grounds: (1) The federal district court lacked jurisdiction. (2) Even if it had jurisdiction, the court should exercise its discretion to dismiss because of the pendency of another suit, raising the same questions, begun by defendant against plaintiff in the state court in May 1943 and at issue since July 1943. In that suit, defendant asks that plaintiff be enjoined from using its mark "KARU" on the ground that it is deceptivelyPage 850similar to defendant's federally-registered "CORO" marks.

The district court dismissed the second cause of action on the sole ground of lack of federal jurisdiction.
Morris Kirschstein, New York City, for appellant.

Mock Blum, New York City, for appellee.
Before AUGUSTUS N. HAND, CHASE and FRANK, Circuit Judges.
FRANK, Circuit Judge.
We need not decide whether or not the district court has jurisdiction of the declaratory judgment action. For even if it has, the court must determine whether, as a matter of judicial discretion, the suit ought to be entertained in a federal court. Assuming, then, that the court here has jurisdiction, we think it would have abused that discretion had it not dismissed the second cause of action.

Plaintiff (by asserting that the district court has jurisdiction of the declaratory judgment action) concedes that it could have had the state-court suit removed to the federal court, for the two cases deal with identical issues.1But plaintiff lost its right of removal in July 1943 — more than two years before it began the federal action — when the time expired for it to file its plea or answer in the state-court action.2Plaintiff may not use a federal declaratory judgment action as a substitute for a removal right thus lost by plaintiff's inaction. Compare the attempt to use habeas corpus as a substitute for an appeal barred by lapse of time.3

Affirmed.
Supplemental Opinion
Although neither appellant nor appellee noted the matter, it is now suggested that, under Rule 54(b), Federal Rules of Civil Procedure, 28 U.S.C.A., the order was not appealable because the district judge did not make "an express determination that there is no just reason for delay". If the district judge within ten days makes such an express determination, we shall treat it as made nunc pro tunc, and our order of affirmance will stand; otherwise, the appeal will be dismissed.4
  1. See 28 U.S.C.A. § 71 as it read in 1943 [now §§ 1441, 1445, 1447]. We need not consider whether the identity of issues alone would require dismissal. See Brillhart v. Excess Ins. Co.,316 U.S. 491, 62 S.Ct. 1173, 86 L.Ed. 1620. ↩
  2. See 28 U.S.C.A. § 72, as it read in 1943 [now §§ 1446, 1447]. ↩
  3. Cf. Sunal v. Large,332 U.S. 174, 67 S. Ct. 1588, 91 L.Ed. 1982. ↩
  4. If the judge does not make the determination, the writer of this opinion will have considerable doubt about the propriety of our dismissing the appeal, because he doubts whether the portion of Rule 54(b) here pertinent was within the power of the Supreme Court under the governing statute. For the rule to that extent seems to confer upon a district judge the authority to enlarge or diminish our appellate jurisdiction; and it is doubtful whether the statute gives the Supreme Court the power to affect appellate jurisdiction. See the writer's dissenting opinion in Clark v. Taylor, 2 Cir.,163 F.2d 940at 951 note 12 (second paragraph); and his dissenting opinion in American Machine and Metals, Inc., v. DeBothezat Impeller Co., Inc., 2 Cir.,173 F.2d 890at 892 note 5. ↩