Summary
In Maternally Yours, the district court did not, as in the instant action, have to consider the prejudice that might result to a defendant who, for a period of one and a half years, had been engaged in active litigation with the same plaintiff over facts substantially similar to those forming the basis of the federal action.
Summary of this case from Mars, Incorporated v. Standard Brands, Inc.Opinion
January 25, 1950.
Irving F. Goodfriend, New York City, for plaintiff.
Hartman, Sheridan Tekulsky, New York City, for defendant.
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 matter. 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.