The opinion of the court was delivered by: Dennis L. Beck United States Magistrate Judge
ORDER DENYING PLAINTIFF'S MOTION TO REMAND ACTION
Plaintiff Gerawan Farming, Inc. ("Plaintiff"), filed the instant motion to remand this action to the Fresno County Superior Court on November 23, 2010. The motion was heard on January 14, 2011, before the Honorable Dennis L. Beck, United States Magistrate Judge. James Ham appeared on behalf of Plaintiff. Marshall Whitney appeared on behalf of Worrel & Worrel and Rodney K. Worrel (the "Worrel Defendants"), and Bradley Kaplan appeared on behalf of Townsend and Townsend and Crew, LLP, Matthew E. Hinsch and William M. Hynes (the "Townsend Defendants").
Plaintiff filed this legal malpractice action against the Townsend Defendants and the Worrel Defendants on September 30, 2010, in Fresno County Superior Court. The Worrel Defendants removed the action to this Court on October 25, 2010, pursuant to this Court's exclusive jurisdiction in cases relating to patents, plant variety protection and copyrights. 28 U.S.C. § 1338.
On November 23, 2010, Plaintiff filed the instant motion to remand the action. The Townsend Defendants opposed the motion on December 29, 2010, and the Worrel Defendants opposed the motion on December 30, 2010. Plaintiff filed its reply on January 7, 2011.
ALLEGATIONS IN THE COMPLAINT
Plaintiff's complaint sets forth a single cause of action for legal malpractice based on Defendants' legal representation in connection with the creation of five plant patents.
According to the complaint, Plaintiff is the nation's largest grower of stone fruit and has marketed its fruits under the PRIMA brand for decades. Its PRIMA trademark was registered, in standard form, with the United States Patent and Trademark Office on June 2, 1987. The mark was registered in stylized form on March 17, 2009.
Beginning in 1984 and continuing to at least 1996, Plaintiff retained the Worrel Defendants to provide legal advice with respect to its intellectual property, including its PRIMA trademark. The Worrel Defendants successfully prosecuted four United States plant patents on behalf of Plaintiff: "Prima Red Plum 9-1," "Prima Black Plum 5-25," "Prima Black Plum 8-15," and "Prima Gattie Peach Tree."
In or around mid-1996, Plaintiff retained the Townsend Defendants in connection with a possible trademark infringement action. The Townsend Defendants' scope of representation soon widened and they became Plaintiff's outside counsel regarding all matters pertaining to its trademark and patents. The Townsend Defendants represented Plaintiff in this capacity through at least January 2010.
In or around 2001, the Townsend Defendants "prepared and prosecuted" United States plant patent "Nectarine Tree Named 'Prima Diamond 19.'"
On January 29, 2010, Plaintiff filed a trademark infringement action in this Court against Prima Bella Produce, Inc., 1:10cv0148 LJO JLT. On June 25, 2010, Prima Bella filed an answer setting forth an affirmative defense alleging that Plaintiff's claims fail because its "alleged PRIMA mark with respect to fresh fruits are generic variety designations." Prima Bella also filed a counterclaim against Plaintiff alleging that PRIMA cannot be used as a trademark designation because Plaintiff's use of the PRIMA name "as a portion of the patent plant varietal name" rendered the mark a "functional and/or generic designation for [Plaintiff's] fruit varieties."
Plaintiff contends that Defendants breached their duty of care by negligently preparing and prosecuting the above patents by including the PRIMA trademark in the patent name. Plaintiff contends that this created a risk that its PRIMA trademark could be damaged and/or invalidated. Plaintiff contends that the Townsend Defendants further breached their duty of care by (1) initially concealing the fact that the Townsend Defendants had prosecuted a patent employing the PRIMA trademark; (2) failing to advise Plaintiff to sue the Worrel Defendants for legal malpractice; (3) failing to advise Plaintiff to consult with independent counsel regarding its rights and ...