Integrity Magnesia Corp. v. Mifflin, McCambridge Co.

28 F.R.D. 596

Opinion

GRIM, Judge.

This is an action for infringement of plaintiff's registered trade-mark, in which defendant has filed a counterclaim for a declaratory judgment seeking to cancel the registration of the mark, and other relief.

Plaintiff has moved to strike off the counterclaim on the ground that there is no controversy of a justiciable nature ¹ and that the court should not take jurisdiction of the counterclaim since the judgment in the action will obviate the necessity for a declaratory judgment.

There clearly exists a controversy of a justiciable nature since plaintiff’s action is for infringement of plantiff’s trade-mark. The counterclaim for declaratory judgment is merely another aspect of that controversy.

Whether or not the judgment in this action will obviate the necessity for a declaratory judgment, defendant if successful would be entitled to the relief prayed for in the counterclaim,² and no grounds exist for striking it off.

Order

And now, October 4, 1961, plaintiff’s motion to strike off defendant’s counterclaim is denied.

Footnotes

1

. An essential prerequisite to a declaratory judgment, Ashwander v. T. V. A., 1936, 297 U.S. 288, 325, 56 S.Ct. 466, 80 L.Ed. 688.

2

. Indeed, if defendant does not assert its claim in this action it may lose it. See F.R.Civ.P. 13, 28 U.S.O., which requires the assertion of such claim in this manner.