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Adirondack Cookie Company v. Monaco Baking Company

May 9, 2012

ADIRONDACK COOKIE COMPANY INC., DOING BUSINESS AS CORSO'S COOKIES, PLAINTIFF,
v.
MONACO BAKING COMPANY, DEFENDANT.



The opinion of the court was delivered by: Mae A. D'Agostino, U.S. District Judge:

MEMORANDUM-DECISION AND ORDER

I. INTRODUCTION

Plaintiff commenced this action on September 1, 2011, pursuant to the Declaratory Judgment Act. Currently before the Court is Defendant's motion to dismiss for lack of personal and subject-matter jurisdiction. See Dkt. No. 8.

II. BACKGROUND

A. Underlying conduct

Plaintiff is a New York corporation, with its principal place of business at 314 Lakeside Road, Syracuse, New York. See Dkt. No. 5 at ¶ 2. Defendant is a California corporation, with its principal place of business at 14700 Marquardt Avenue, Santa Fe Springs, California. See id. at ¶ 3.

Plaintiff is in the business of manufacturing, decorating and selling handmade, high-quality cookies. See id. at ¶ 9. Plaintiff's cookies are packaged and sold in a variety of ways, one of which is as a "Cookie Bouquet." See id. at ¶ 10. A Cookie Bouquet is comprised of several components that are combined in a way so as to display the cookies in a manner reminiscent of a flower arrangement or bouquet. See id. at ¶ 11. The Cookie Bouquet is comprised of decorative cookies, each one resting on a clear plastic pedestal attached to a wood post (the "Stand"), which is inserted into a hole cut into a rounded base, for display in a manner similar to a flower arrangement. See id. at ¶ 12.

The plastic pedestals of the Stands used in the Cookie Bouquets are manufactured from a mold. See id. at ¶ 13. At the time the mold for the Cookie Bouquet Stand was created, Plaintiff intended to apply for a patent covering its design and, therefore, the words "Patent Pending" were incorporated into the mold during the design phase. See id. Plaintiff, however, never applied for a patent and the Patent Pending imprint was inadvertently retained on the mold due to an oversight, resulting in the imprint of Patent Pending on a limited number of the Cookie Bouquet Stands. See id. at ¶ 14.

On August 3, 2011, Defendant, through its attorney, contacted Plaintiff and informed

Plaintiff that it was aware that Plaintiff 's Cookie Bouquet Stand is nearly identical to a cookie support stand used by Defendant. See id. at ¶ 19. In its letter, Defendant claimed to be "'the inventor of the cookie support stand packaging concept.'" See id. Defendant further accused Plaintiff of copying its design for the Stand and filing a fraudulent patent application with the Patent Office, considering that Defendant is the actual inventor of the Cookie Support Stand. See id.; see also Dkt. No. 8-5.

On August 31, 2011, Defendant sent Plaintiff an additional letter informing Plaintiff that it believed that it has a claim for false marking pursuant to 35 U.S.C. § 292 (the "False Marking Statute") and that, "if a patent application is pending, [Plaintiff's] letter does not address the false declaration that must have been filed, meaning [Defendant] has a cause[ ] of action in the alternative for the fraud practiced on the Patent Office." See Dkt. No. 8-9.

In response to this correspondence, Plaintiff brought this action against Defendant pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, seeking a judicial declaration that it is not liable for false marking under the Patent Act, 35 U.S.C. § 292. See Dkt. No. 5 at ¶ 1.

B. Relevant statutory provisions

The False Marking Statute was enacted on August 29, 1842. See 5 Stat. 544, ยง 5. The statute provided for a fine of "not more than $500" for each article a defendant falsely marked as patented "for the purpose of deceiving the public." Id. For over a hundred years, "the fine was levied only once on each scheme to falsely mark, rather than once on each item falsely marked." Advanced Cartridge Technologies, LLC v. Lexmark International, Inc., No. 8:10-cv-486, 2011 WL 6719725, *1 (M.D. Fla. Dec. 21, ...


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