SACRAMENTO – On Aug. 2, the U.S. District Court for the Eastern District of California granted Early Morning Inc.'s motion to remand a trademark infringement case back to state court.
Judge Kimberly J. Mueller wrote the court order granting Early Morning Inc.’s motion to remand the case from the federal court.
Plaintiff Early Morning Inc. filed a complaint alleging counts of violation of California Business and Professions code, common law trademark infringement and common law unfair competition against former employee Eliud Moreno and his company EO United LLC, who operate a restaurant in El Dorado Hills called Friends with Benedicts.
The plaintiff claims that the defendants use The Mimosa House trademark “on their store-front and in marketing materials, including a website, www.friendswithbenedictsmimosahouse.com,” according to the ruling.
The plaintiff registered The Mimosa House trademark in 2014.
The plaintiff alleged that the defendants’ use of its trademark “is likely to cause confusion, mistake, or deception among consumers as to the source, quality, and nature of defendant’s [sic] establishment,” according to the ruling.
The plaintiff claims that already it is being contacted by local press inquiring about the relationship between The Mimosa House and Friends with Benedicts and that it has already lost sales.
The defendants opposed the motion for removal, arguing that the plaintiffs can only pursue a remedy under the Lanham Act.
Mueller stated that “defendants appear to argue that a plaintiff who seeks a defendant’s profits in any case involving a disputed trademark necessarily seeks a remedy available exclusively under the Lanham Act," pointing out that California common law also allows plaintiffs to recover profits, and that plaintiff has not necessarily pled a claim “arising under the Lanham Act.”
Mueller stated that the defendants’ “merely pointing to similarities between plaintiff’s claims and federal trademark law is insufficient” to create a basis for federal jurisdiction.
“Plaintiff is the master of its complaint and is entitled to defeat federal jurisdiction by proceeding solely on state law claims,” Mueller wrote.
The order remanded the case to state court and the court denied the defendants’ motion to dismiss as moot.
U.S. District Court for the Eastern District of California case number 2:18-cv-00483-KJM-GGH