Opinion
Civil Action No. 98-4242 (NHP), Civil Action No. 98-4254 (NHP).
January 26, 1999.
Paula G. A. Ryan, Esq., ROSEN, PREMINGER BLOOM, Teaneck, N.J., Attorneys for Plaintiff.
Ronald Daugherty, Esq., PELINO LENTZ, P.C., Haddonfield, N.J., Attorneys for Defendants, Multicast Corporation, Thomas John.
LETTER OPINION ORIGINAL ON FILE WITH CLERK OF THE COURT
Dear Counsel:
This matter comes before the Court on Magistrate Hedges' Report and Recommendation that case number 98-4254 be remanded to the New Jersey Superior Court, and on defendants' motion to dismiss case number 98-4242 for failure to allege an adequate basis for federal jurisdiction. For the reasons explained below, this Court will ADOPT Judge Hedges' Report and Recommendation as to the removed action and GRANT defendants' motion to dismiss the federal action.
DISCUSSION
The factual background of this litigation is fully set out in Magistrate Hedges' December 4, 1998 Report and Recommendation and need not be restated here. The two lawsuits, one removed from the New Jersey Superior Court and the other filed here, involve the same parties and operative facts.I. The Removed Action
Magistrate Judge Hedges issued a recommendation to this Court that civil action 98-4254 be remanded to the New Jersey Superior Court for failure to state a basis for federal subject matter jurisdiction. This Court shall now make a de novo determination of whether to accept, reject, or modify, in whole or in part, the findings made by the Magistrate Judge. See Local Rule 40D. The United States Supreme Court has held that "[w]here a Magistrate makes a finding or ruling on a motion or an issue, his determination should become that of the district court unless specific objection is filed within reasonable time." Thomas v. Arn, 474 U.S. 140, 150-51 (1985).
There being no diversity of citizenship in this case, this Court's jurisdiction could only be predicated upon the existence of a federal question that is presented on the face of the plaintiff's well-pleaded complaint. See Railway Labor Executives Ass'n v. Pittsburgh Lake Erie R. Co., 858 F.2d 936, 939 (3d Cir. 1988). As Judge Hedges rightly found, the complaint in this case makes no mention or reference to any federal legal authority or claim, but rather alleges only state law causes of action. This Court also agrees with Judge Hedges' finding that plaintiff's claim for "salary, sales bonus and other benefits" is not preempted by ERISA.
Therefore, and also for the reasons articulated in Judge Hedges' Report and Recommendation, this Court will remand this case to the New Jersey court from which it was removed.
II. The Federal Action
The federal action involves the same parties, claims, and issues as the removed complaint. The only federal cause of action involves an allegation of trademark infringement under the Lanham Act. The complaint alleges that defendants John and Multicast Corporation infringed upon Sigma's trademark rights by "using in interstate and international commerce the acronym `MCC.'" Complaint ¶ 56. In this motion, defendants contend that the allegations of "use" are insufficient to state a claim under the Lanham Act.
The cases are clear that the "term `used in commerce' in the Lanham Act refers to a sale or transportation of goods bearing the mark." Person's Co. Ltd. v. Christman, 900 F.2d 1565, 1568 (Fed. Cir. 1990). In this case, there is simply no allegation that any party to this litigation has ever sold or transported any product or service bearing the mark "MCC." Therefore, proof of every allegation in the complaint would be insufficient to establish either Sigma's ownership of common law trademark rights or defendants' infringing use of that mark. Plaintiff's claim under the Lanham Act must therefore be dismissed.
Sigma does not allege to have applied for trademark registration with the Patent and Trademark Office.
This Court will not exercise supplemental jurisdiction over the remaining state-law claims, all of which are the subject of an ongoing (and earlier filed) state court proceeding.
An appropriate Order accompanies this Letter Opinion.