Maternally Yours, Inc. v. Your Maternity Shop, Inc.

89 F. Supp. 167, 84 U.S.P.Q. (BNA) 316, 1950 U.S. Dist. LEXIS 3944

• Court: District Court, S.D. New York
• Decided: January 25, 1950
• Status: Published

Opinion

IRVING R. KAUFMAN, District Judge.

The Court has before it a motion by the defendant for a stay of the instant federal action pending a determination of an action heretofore instituted in the Supreme Court of the State of New York, County of Bronx, based on the same subject matter. Both actions are based upon the same alleged trade-mark infringement and unfair competition. Though substantially the same issues are in dispute in the two actions and the Court of Appeals in this Circuit has held that the trade-mark registration only confers procedural advantages and does not enlarge the registrant’s substantive rights—Best & Co. v. Miller, 2 Cir., 1948, 167 F.2d 374, still the federal court can more effectively dispose of all questions raised in the action because it alone can determine the validity of the federal registrations of the trade-mark. Nevertheless, the defendant should not be harassed and vexed with two actions pending in two separate courts over substantially the same subject mattfer. Therefore this motion will be granted unless the plaintiff agrees not to proceed further with its action in the Supreme Court of the State of New York, Bronx County, until the action in this court has been determined.