To: Lisa Howard [mailto:
From: A. Paralegal [mailto:
Date: April 6, 2017 10:23 pm
Subject: SLB Civil Removal Research
Dear Ms. Howard;
I am writing in return to your requests as per the Sweet Lorraine’s case. As you are aware, Mr. Sawyer’s attorney had filed a summons and complaint in Wayne County Circuit Court in the State of Michigan. Due to this case having many legal errors, including filing in the wrong jurisdiction, we are proceeding with this case, and at your request, I have composed a memo in which outlines the research I intend to conduct in regards to this matter.
The various legal and factual search terms I will use when conduct my research will include, but not limited to will be: jurisdiction of federal law, removal of trademark infringement case state to federal court, 28 U.S.C. §1441, 1446, Michigan State jurisdiction trademark infringement, diversity of citizenship, burden of proof for removal to Federal Court, proof required for removal to Federal Court, burden of proof for diversity of citizenship and proof required to prove diversity of citizenship.
The legal issues that need to be asked in this case are:
Who has burden of proof in this case to remove the Sweet Lorraine’s case to Federal Court?
What proof do we need to present to the court to show cause for removal from Wayne County Circuit Court in the State of Michigan to Federal Court?
What primary laws support our motion to remove this case to a Federal Court?
What Federal Court rules support our ability to remove this case to Federal Court?
Who is responsible for the burden of proof in regards to the diversity of citizenship claim?
What proof do we need to present to the court to prove diversity of citizenship?
What are our chances of the court agreeing to move this matter to Federal Court?
What are our chances the court will agree with diversity of citizenship requests?
Primary sources I intend to research will be from the Sixth Circuit Court of Appeals and the United States District Court for the Eastern District of Michigan. I intend to research primary law in regards to removing cases to Federal Court, and discover the rules and laws that allow us this right. I also intend to research to discover who the burden of proof is on and what is required for us to present to the court to support our motion to why the case should be moved to Federal Court. I am aiming at finding at least three primary sources directly in comparison to Sweet Lorraine’s in which cases were filed in the wrong jurisdictions and moved to the Federal Court. I also intend to research how to draft the motion for this task. Search terms I will be using are listed above in the second paragraph of this memo. These terms are not narrowed to these terms, but will be a base for my thoughts and research to grow upon and expand.
The secondary sources I will research will be jurisprudence and treatises. These sources will further explain in more simple terms what is required, and can even lead to some relevant cases as needed for our primary law discovery. The use of secondary sources is important because it allows for a clearer picture of the law, and could potentially save research time.
I am estimating my research will consist of approximately five to six hours. This is a very rough estimate because sometimes research can be less time consuming with the use of secondary sources. Time spent researching could also take longer due to unforeseen issues.
If you require additional assistance, please don’t hesitate to ask.
Sincerely,
A. Paralegal
From: A. Paralegal [mailto:
To: Lisa Howard [mailto:
Date: April 20, 2017 3:23 AM
Subject: Sweet Lorraine’s Systems, LLC v. Sweet Lorraine’s Bakery, LLC (File No. 3176)
Dear Ms. Howard:
I have had the time to research removing this matter to federal court. I am including my predictive memo regarding this, as per your request.
Statement of Facts
Eight months ago, our firm began working with Ms. Donnelly regarding incorporation of her family owned business Sweet Lorraine’s Bakery, LLC out of Charlotte, NC. This bakery specializes in French and Italian-inspired pastries, cakes, cookies and artisan breads. The business is a one store location in which they feature a daily menu, create special order occasion cakes and have a website, but does not offer any sales through the online marketplace. All advertising is done through Facebook, Twitter and their webpage and by word of mouth.
Two months ago, Ms. Donnelly was contacted by Mr. Greg Sawyer. Mr. Sawyer and his wife operate Sweet Lorraine’s Café and Bar in Detroit and have two locations. Mr. Sawyer is the vice president of Sweet Lorraine’s Systems, LLC in Detroit, MI. Mr. Sawyer’s Café and Bar is a restaurant that specializes in American fare and includes some baked goods on their menu. The Café and Bar offers a website in which they sell salad dressings and apparel that are sold throughout the country. Mr. Sawyer recently began pursuing a new franchise called “Sweet Lorraine’s Mac n’ Cheez Kitchen” and currently have two locations open in Detroit suburbs and allegedly had been approached by an individual from North Carolina regarding expanding into this state, however; the exact location was not mentioned.
Mr. Sawyer contacted Ms. Donnelly because he and his wife have a trademark on the name “Sweet Lorraine’s” for all restaurants, catering and baking services in the United States. This trademark has been confirmed with the United States Patent and Trademark Office. Mr. Sawyer demanded our client, Ms. Donnelly to change the name of her business or he would commence a lawsuit against if she does not follow his demands.
Our firm suggests Ms. Donnelly not change the name of her business because based upon research of previous court rulings, we find Mr. Sawyer would most likely not prevail in his claims of Ms. Donnelly committing trademark infringement.
Two months following this conversation, Ms. Donnelly received an email from Mr. Sawyer’s attorney, Marsha Jabber. Attached to the email was a Summons and complaint against Sweet Lorraine’s Bakery, LLC, which was filed in Wayne County Circuit Court in the State of Michigan (a Michigan State Court). Ms. Donnelly nor any employee of Ms. Donnelly were personally served with this summons and complaint, nor does it appear there had been any attempt of legitimate service of process. Lastly, it appears Mr. Sawyer’s attorney wrongly filed this court in Michigan State Court, not Federal District Court.
Question(s) Presented
What is our burden on a motion to remove this matter to Federal Court?
Can we meet our burden of proof on the motion to remove this matter to Federal Court?
What or how do we need to meet our burden of proof on this motion?
Short Answer(s)
The burden is on the defendant to remove the matter to Federal Court.
Yes, we can meet our burden on the motion to move this matter to Federal Court by proving Mr. Sawyer and Ms. Donnelly live in different states.
Analysis
Under the provisions of 28 U.S.C.S. § 1441, the defendant must be the moving party to remove the matter to Federal court when involving diversity of citizenship in a civil matter. This is because Mr. Sawyer and Ms. Donnelly reside in different states. Law to support this finding is Schwartz v. Elec. Data Sys., Inc., 913 F.2d 279 (6th Cir. 1990), and states exactly “Congress adopted this presumption when it enacted the removal statute, 28U.S.C. § 1441(b), under which a diversity action is "removable only if none of the . . . defendants is a citizen of the State in which such action is brought." Ms. Donnelly is not a resident of the state of Michigan, therefore she can remove this matter to federal court.
Further stated “As in all diversity removal cases, no defendant in the action may be a citizen of the state in which the action is brought. 28U.S.C.S. § 1441(b)” in Hite v. Norwegian Caribbean Lines, 551 F. Supp. 390 (E.D. Mich. 1982) and this means because Mr. Sawyer and Ms. Donnelly do not reside in the same state, under the diversity of citizenship, this allows the right for Ms. Donnelly to move this case to federal court.
Theriot v. HSBC Bank, No. 10-CV-11617, 2010 U.S. Dist. LEXIS 135643, at *10-11 (E.D. Mich. Dec. 22, 2010) shows the provisions of 28 U.S.C.S. § 1446, and states the notice of removal of a civil action or proceeding shall be filed within 30 days after the receipt by the defendant, through service or otherwise, of a copy of the initial pleading setting forth the claim for relief upon which such action or proceeding is based, or within 30 days after the service of summons upon the defendant if such initial pleading has then been filed in court and is not required to be served on the defendant, whichever period is shorter as shown in In an action based on diversity, the action "shall be removable only if none of the parties in interest properly joined and served as defendants is a citizen of the State in which such action is brought."
28U.S.C. § 1441(b). 28U.S.C. § 1446(d) governs the notice requirement for removal:
Promptly after the filing of such notice of removal of a civil action the defendant or defendants shall give written notice thereof to all adverse parties and shall file a copy of the notice with the clerk of such State court, which shall affect the removal and the State Court shall proceed no further unless and until the case is remanded.
28U.S.C. § 1446(d) states the removing party has the burden of proving that the federal district court has jurisdiction.
Since trademark infringement arises out of federal law, and both parties live in different states, this allows for Ms. Donnelly the right to motion to remove this case to federal court.
Conclusion
Yes, Ms. Donnelly would be successful in her motion to remove this case to federal court.
Howard & Mills, P.C.
123 Main Street
Charlotte, NC 28277
555-555-5555
April 14, 2017
Sweet Lorraine’s Bakery, LLC
220 West Boulevard
Charlotte, NC 28277
Dear Ms. Donnelly:
I hope this letter finds you well. First off, our duty here at Howard & Mills, P.C. is to do the best to represent our clients personal interests the best we can within the scope of the law. The legal process can be very confusing and the complex terminology can frustrate even some of the best attorneys. The purpose of this letter is to explain to you each claim Mr. Sawyer has made against you in his summons and complaint, in an organized manner and in language that is understandable. Many attorney’s fail to explain to their clients what’s happening with their case, and if they do, it is usually in legal terms most people have never heard before, let alone know what these words mean. We do things differentlyat this firm, if you are paying us for our expertise, you deserve to know and understand what is happening through the legal process in normal language. I will explain if there is any merit in each claim, and if there is reason to believe Mr. Sawyer would have victory in any of his causes of actions. I will additionally tell you what defenses will be used to strengthen your case and why.
Summons
This page states that we must file a written answer within a certain number of days. An answer is where we go through the entire petition and either admit or deny each allegation made by Mr. Sawyer.
Complaint
This is Mr. Sawyers side of the story and what he alleges you have done that he would like a remedy for. The introduction states the story behind the use of the “Sweet Lorraine’s” and a small history of their business. Mr. Sawyers goes on to explain he obtained a patent on the trademark name of “Sweet Lorraine’s”, and lastly how he came to discover that you had been using the same general name for your business.
Parties
This section states limited information about Mr. Sawyers and yourself, Ms. Donnelly. This also describes the addresses of both businesses using the name “Sweet Lorraine’s”.
Jurisdiction and Venue
Jurisdiction is taking your case to the proper court. Not all courts hear all cases. When filing with the court, we must be sure we have the correct court. There are many different levels of courts and in different areas. Venue means location. In each state, there are different circuits or areas within the state. Each circuit deals only with certain counties in that state, and in each state, there are several circuits.
Background Facts
Mr. Sawyer lists more detailed into the background or history of his business, details of having the mark “Sweet Lorraine’s” patented and different things in which his business does, promotes, sells, or even how they market and sell their services and goods.
Defendant’s Conduct
These are the complaint(s) Mr. Sawyer alleges against you, or what you have done in which he is finding fault or legality with.
Cause of Action
I will list each cause of action separately. Each cause of action states exactly what specific law you have been accused of committing against Mr. Sawyer. This is the section in which I will explain what the law means, if I think they will prove you have committed this act, what defense we can use against their claims or how we can prove these causes of action to be disproven. Some of these causes of actions are Mr. Sawyer’s responsibility to prove, however.
First Cause of Action:
Trademark Infringement – 15 U.S.C. § 1114
In Mr. Sawyer’s claim, item 24, he claims (his business is) “highly distinctive and arbitrary.” A few examples of arbitrary marks are EXXON, Kodak and Apple. When people hear these words, these words are not related at all to the products they promote, but almost everyone knows Kodak sells cameras and things related to photography in general. In this world, there are probably a very large number of people named Lorraine. There are also a great number of bakeries and bars. Just because someone names their establishment the same name five states away, does not mean it will cause any confusion. The main idea of trademark infringement is to cause confusion among consumers.
In item 25, Mr. Sawyer notes the “Trademark is confusingly similar”, and goes on to state you have “intentionally and knowingly” been using his trademark name of Sweet Lorraine’s to cause confusion. Details of these allegations continue through number 31.
When deciding if one has committed trademark infringement, under 15 U.S.C 1114(1) there are eight factors in which mainly determine if use of a trademark causes confusion. Those eight factors are
1. The strength of the plaintiff’s mark;
2. The relatedness of the service;
3. The similarity of the marks;
4. The evidence of actual confusion;
5. The marketing channels used;
6. The likely degree of purchaser care;
7. The defendant’s intent in selecting the mark; and
8. The likelihood of expansion of the product lines.
In the case of Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996)both owners of these golf clubs were named the same name, and used the same ways to market and promote their businesses. The court ruled that there was no infringement because even though they both sold golf memberships and were named the same name, consumers did not confuse them. The two business owners were not in the same geographic location. These two companies had different buildings, course layout, and even though there were a few known acts of confusion, it was not sufficient to the court because the confusion was not between consumers. The court also found there was no actual intent on the behalf of either party to make others believe they were affiliated with each other or trying to take business from the other in a deceitful or fraudulent manner.
Mr. Sawyer will not be successful in this claim is because Lorraine is a common name. His business is named “Sweet Lorraine’s Café and Bar”, Your business is named “Sweet Lorraine’s Bakery”. When on sees café or bar they assume the business sells beverages, not cakes. The two businesses are in completely different states and geographic locations. The products are very different, you advertise differently and sell your products differently. Mr. Sawyer sells his products through internet sales, whereas you only advertise your services online. Sales through your business are done only by people personally coming to your store. Your business is well known by the locals, and they would not confuse your business with another business because they are familiar with you and your services.
Second Cause of Action:
Federal Trademark Dilution – 15 U.S.C. § 1125(c)
Trademark dilution is where you are using his name to make his mark less arbitrary or fanciful. In the case of Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) The district court found that the “Daddy’s Music Store” and the “Daddy’s” marks are arbitrary marks because daddy does not relate to music or musical instruments, however; The U.S. Patent & Trademark Office revealed fifteen registered marks with the same phrase of “Daddy’s” and another three marks pending registration. The mark “Daddy’s” alone is therefore weakened due to the dilution of the mark.