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Macy's, Inc. v. Strategic Marks, LLC

United States District Court, N.D. California

November 20, 2014

MACY'S, INC. and MACYS.COM, INC., Plaintiffs,
v.
STRATEGIC MARKS, LLC, Defendant

For Macy's Inc., Macys.com, Inc., Plaintiffs, Counters-defendants: Anthony Francis Lo Cicero, PRO HAC VICE, Attorney at Law, New York, NY; Chester Rothstein, Holly Pekowsky, Jessica Capasso, Amster Rothstein Ebenstein LLP, New York, NY; Christopher S Walters, Garner Kimleon Weng, Hanson Bridgett LLP, San Francisco, CA.

For Strategic Marks, LLC, Defendant, Counter-claimant: Benjamin Ashurov, LEAD ATTORNEY, KB Ash Law Group, Pleasanton, CA.

ORDER GRANTING IN PART AND DENYING IN PART MACY'S MOTION FOR LEAVE TO FILE SUPPLEMENTAL COMPLAINT

SAMUEL CONTI, UNITED STATES DISTRICT JUDGE.

I. INTRODUCTION

Now before the court is Plaintiffs and Counter-Defendants Macy's, Inc. and Macys.com, Inc.'s (" Macy's") motion for leave to file a supplemental complaint. ECF No. 132 (" Mot."). Defendant and Counter-Claimant Strategic Marks, LLC (" Strategic Marks") opposes. ECF No. 136 (" Opp'n"). The motion is fully briefed, ECF No. 137 (" Reply"), and appropriate for resolution without oral argument under Civil Local Rule 7-1(b). For the reasons set forth below, the motion is GRANTED in part and DENIED in part.

II. BACKGROUND

This is a trademark infringement case currently set for trial on December 8, 2014. The marks at issue, sometimes referred to by the parties as the " Heritage Marks, " include, among others, the " Abraham & Straus, " or " A& S" marks (collectively, " the A& S Marks"). Macy's alleges that it is the rightful owner and user of the Heritage Marks and that Strategic Marks has willfully and unlawfully infringed on its trademark rights. Strategic Marks counterclaimed asserting that it is the rightful owner of the Heritage Marks and that Macy's, not Strategic Marks, is the infringing party. ECF No. 50 (" Am. Answer & Countercls.").

When the case was filed, Macy's relied only common law rights with respect to the A& S Marks. Since that time, Macy's was issued two federal trademark registrations. ECF No. 132-1 (" Jason Decl.") Exs. B & C. Now, Macy's seeks leave to amend its complaint " to reflect these new registrations and assert infringement of the now federally registered marks." Mot. at 3. Additionally, if leave is granted, Macy's offers to simplify and remove certain dilution and infringement claims it initially asserted against Strategic Marks. Id. Strategic Marks opposes.

III. LEGAL STANDARD

Federal Rule of Civil Procedure 15(d) provides that " the court may, on just terms, permit a party to serve a supplemental pleading setting out any transaction, occurrence, or event that happened after the date of the pleading to be supplemented." Rule 15(d) is intended to give the court discretion and to promote the fullest adjudication possible of the disputes between the parties. LaSalvia v. United Dairymen of Ariz., 804 F.2d 1113, 1119 (9th Cir. 1986); see also Fed.R.Civ.P. 15 advisory committee's note to 1963 amendment.

" 'A supplemental complaint should have some relation to the claim set forth in the original pleading, ' and a court may deny leave to supplement a complaint on grounds of undue delay, prejudice to the opposing party, or futility." Riley v. Correctional Officers Grieco & Collier, No. C 13-4410 CW(PR), 2014 WL 129396, at *5 (N.D. Cal. Jan. 14, 2014) (quoting Keith v. Volpe, 858 F.2d 467, 474 (9th Cir. 1988)).

IV. DISCUSSION

In support of its motion, Macy's argues that permitting it to file a supplemental complaint will promote judicial efficiency without any prejudice to Strategic Marks. In Macy's view, because the A& S Marks have been at issue in this case from the beginning, the supplemental complaint is " relat[ed] to the claim set forth in the original [complaint], " and permitting supplementation at this stage would simply allow the Court to adjudicate all of Macy's potential trademark claims against Strategic Marks. See Keith, 858 F.2d at 474. Furthermore, Macy's argues that Strategic Marks will not be prejudiced if the complaint is supplemented because they have had the opportunity for extensive discovery into the A& S Marks and, in any event, " [t]he fact ...


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