Opinion
02 Civ. 3737 (LAK)
September 20, 2002
ORDER
Plaintiff's motion for leave to amend the complaint (docket item 11) is granted. In so ruling, the Court does not pass on the sufficiency of any of the claims it contains.
In view of the amendment of the complaint, the motion of defendants Ramchandani and Sivari to dismiss the original complaint as to them (docket item 6) is denied as moot.
Plaintiff moves also to dismiss Count III of defendants' counterclaim for lack of subject matter jurisdiction. (Docket item 12) The claim obviously arises under the Lanham Act and therefore is within federal question jurisdiction. The question whether the Court should proceed to issue a declaration that a mark for which a registration application is pending before the Patent and Trademark Office ("PTO") is not registerable, however, is quite another matter. A declaratory judgment is a discretionary remedy. E.g., Wilton v. Seven Falls Co., 515 U.S. 277 (1995); Agency Rent A Car System, Inc. v. Grand Rent A Car Corp., 98 F.3d 25, 32 (2d Cir. 1996); In re Orion Pictures Corp., 4 F.3d 1095, 1100 (2d Cir. 1993), cert. denied, 511 U.S. 1026, 114 S.Ct. 1418, 128 L.Ed.2d 88 (1994); Goldberg v. Winston Morrone, P.C., No. 95 Civ. 9282(LAK), 1997 WL 139526, at *3 (S.D.N.Y. Mar. 26, 1997). Here, the PTO will determine the registerability of the mark in the first instance, and the parties both will have appellate rights from that determination. If and to the extent that issue must be decided in this case in order to resolve a claim for coercive relief, this Court may do so. But there is no need gratuituously to take on a task that now is where it belongs, in the PTO. Accordingly, plaintiff's motion to dismiss is granted to the extent that Count III of the counterclaim is dismissed without prejudice and in the exercise of discretion and otherwise denied.
SO ORDERED.