Defendant's Attorney: Matthew Lee Stone, Peter L Crema, Jr., Steven V. Rose

Description: Minneapolis, Minnesota intellectual property lawyer represented Plaintiff, who sued Defendant on a trademark infringement theory under 15 U.S.C. 1114.


On April 11, 2022, the Court issued an Order requiring the Defendants Best and Fast Inc. and B.E.S.T. GDR, LLC (collectively “Defendants”), to file a memorandum supporting their position that there is federal subject matter jurisdiction over this action. [ECF No. 23]. As the Court observed, the Plaintiff Horizon Roofing, Inc. (“Horizon”), commenced this suit in Ramsey County District Court, claiming that the Defendants unlawfully used Horizon's trade name in the State of Minnesota in connection with roofing-contractor services. The Defendants then jointly removed the case to the District of Minnesota pursuant to 28 U.S.C. § 1441.

In their Notice of Removal, the Defendants asserted that Horizon's claims depend upon its ownership of a trademark and the alleged infringement of that mark. [ECF No. 1 ¶ 5]. Defendants further claimed that the Court has jurisdiction over Horizon's “trademark claim pursuant to the plain meaning of 28U.S.C. § 1338(b).” [Id. ¶ 7]. Essentially, the Defendants alleged that there was federal-question jurisdiction because Horizon's Complaint asserted a claim arising under the federal trademark laws. 28 U.S.C. § 1331 (“The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States.”).

However, in the April 11th Order, the Court explained that Horizon's Complaint did not reference any federal cause of action, and under the well-pleaded complaint rule, it appeared that Horizon asserted only state law claims. [ECF No. 23 at 4-5 (citing Caterpillar Inc. v. Williams, 482 U.S. 386, 392 (1987), and Markham v. Wertin, 861 F.3d 748, 754 (8th Cir. 2017))]. The Court noted that its preliminary research indicated that the Eighth Circuit had not decided whether a case may be removed based on federal-question jurisdiction where the face of the complaint alleges only a claim of trademark or trade name infringement arising under state law. The Court pointed to cases from other jurisdictions that have found removal improper under similar circumstances. [Id. at 6-7 (citing cases)]. Therefore, the Court required the Defendants to file a memorandum of law including appropriate citations to legal authority supporting the basis for the Court's exercise of subject matter jurisdiction. [Id. at 7-8].

On May 2, 2022, the Defendants filed a memorandum asserting that there is subject matter jurisdiction in this Court because Horizon's claims arise under federal law. [ECF No. 25]. Horizon responded, arguing that there is no federal-question jurisdiction in this case, and requested that the action be remanded to Ramsey County District Court. [ECF No. 26]. For the reasons stated below and in the Court's April 11th Order, the Court concludes that subject matter jurisdiction is lacking, and this action must be remanded to Ramsey County District Court.
Horizon Roofing, Inc. v. Best & Fast Inc. (D. Minn. 2022)

Outcome:
Accordingly, IT IS HEREBY ORDERED that

1. This matter is REMANDED to Ramsey County District Court, pursuant to 28 U.S.C. § 1447(c) for lack of subject matter jurisdiction; and

2. Defendants' Motion to Dismiss [ECF No. 14] is DENIED AS MOOT.
Horizon Roofing, Inc. v. Best & Fast Inc. (D. Minn. 2022)

Plaintiff's Experts:

Defendant's Experts:

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