United States District Court, D. Nebraska
M. BAZIS UNITED STATES MAGISTRATE JUDGE
matter is before the Court on Plaintiff's Motion to
Remand. (Filing No. 11.) The undersigned will
recommend that the motion be granted.
operates a business repairing and installing driveways in
Omaha, Nebraska. Defendants run a competing business.
Plaintiff contends that Defendants paid Google to generate an
advertisement that directed consumers to Defendants'
website when they searched for “The Driveway
Company” or “The Driveway Company Omaha.”
On May 24, 2018, Plaintiff sent a cease and desist letter to
Defendants. However, Defendants refused to stop their
advertising practices. (Filing No. 1.)
13, 2018, Plaintiff brought suit against Defendants in the
District Court of Douglas County, Nebraska, asserting three
claims: (1) “Trade Name Infringement” under state
law; (2) “Trade Name Infringement, False Designation of
Origin, and Unfair Competition” in violation of Section
43(a)(1)(A) of the Lanham Act, 15 U.S.C. §
1125(a)(1)(A); and (3) “Deceptive Trade
Practices” in violation of Neb. Rev. Stat. §
87-303. Plaintiff also applied for a temporary injunction,
which was granted by the state court on June 26, 2018.
(Filing No. 1.)
23, 2018, Defendants removed the case to this Court pursuant
to 28 U.S.C. §§ 1331 and 1441 based on
Plaintiff's federal Lanham Act claim. (Filing No.
1.) Defendants also filed a counterclaim seeking
cancellation or restriction of the service mark “The
Driveway Company, ” which is on the supplemental
registry of the United States Patent and Trademark Office
(“USPTO”). Defendants asserted that the mark
“should be cancelled as it is merely descriptive and
never should have [been] registered pursuant to 15 U.S.C.
§ 1052(e).” (Filing No. 2.) Defendants
further alleged that if the mark was “not cancelled, it
should be restricted to require use with explicit reference
to the specific driveway repair services offered by
August 13, 2018, Plaintiff filed an amended complaint,
removing its Lanham Act claim. (Filing No. 9.)
Defendants filed an answer and reasserted their counterclaim
for cancellation or restriction of the service mark on August
27, 2018. (Filing No. 14.) On August 13, 2018,
Plaintiff moved to dismiss Defendants' counterclaim
(Filing No. 10), arguing that this Court lacked
jurisdiction over the counterclaim because a petition to
cancel a trademark can only be done through an administrative
proceeding before the USPTO.
Court granted Plaintiff's motion and dismissed
Defendants' counterclaim on September 26, 2018. This
Court found that Defendants could not bring a cancellation
claim or counterclaim in this Court absent an underlying
Lanham Act claim. (Filing No. 18.)
now seeks to remand this action back to the District Court of
Douglas County, Nebraska. (Filing No. 11.)
defendant may remove an action from state court to federal
court when a federal court would have had original subject
matter jurisdiction over the action. 28 U.S.C. §
1441. “The burden of establishing that a cause of
action lies within the limited jurisdiction of the federal
courts is on the party asserting jurisdiction.”
Arkansas Blue Cross & Blue Shield of Little Rock
Cardiology Clinic, P.A., 551 F.3d 812, 816
(8th Cir. 2009). “Federal
courts are to resolve all doubts about federal jurisdiction
in favor of remand.” Dahl v. R.J. Reynolds Tobacco
Co., 478 F.3d 965, 968 (8th Cir.
2007) (internal quotation omitted).
case was removed to this Court based on federal question
jurisdiction under 28 U.S.C. § 1331. (Filing No.
1.) Plaintiff argues that because it amended its
complaint to remove the Lanham Act claim, this case should be
remanded to the District Court of Douglas County, Nebraska.
(Filing No. 11.) However, [a]mending a complaint
after removal to dismiss the claims upon which a court's
federal question jurisdiction was initially based does not
defeat federal jurisdiction.” Union Pacific
Railroad Co. v. Expert Management Service, No. 8:15CV194,
2015 WL 6453856, at *2 (D. Neb. Oct. 26, 2015). See
also Quinn v. Ocwen Fed. Bank FSB, 470 F.3d 1240,
1248 (8th Cir. 2006) (“[J]urisdiction
is determined at the time of removal, even though subsequent
events may remove from the case the facts on which
jurisdiction was predicated”). Under 28 U.S.C. §
1367, “courts have the discretion to exercise
supplemental jurisdiction over remaining state-law claims
even after the district court has dismissed all claims over
which it has original jurisdiction.” McLain v.
Andersen Corp., 567 F.3d 956, 965 (8th Cir.
2009) (internal quotation omitted).
to exercise supplemental jurisdiction over a remaining state
law claim is within the court's discretion; however,
federal district courts generally should exercise judicial
restraint and avoid state law issues when possible because
such claims are more properly heard by state courts.”
Demien Construction Co. v. O-Fallon Fire Prot. Dist., 72
F.Supp.3d 967, 974 (E.D. Mo. 2014). When deciding to
exercise supplemental jurisdiction, courts should consider
judicial economy, convenience, fairness, comity, and whether
the plaintiff has attempted to manipulate the forum.
Carnegie-Mellon Univ. v. Cohill, 484 U.S. 343, 357
(1988). However, “in the usual case in which all