The Southern District of Indiana Remands Breach of Contract Case to Marion County Superior Court After Complaint Amended to Drop Trademark Infringement Claim


Indianapolis, IN – The Honorable William T. Lawrence of the Southern District of Indiana has granted a Motion to Remand to the Marion County Superior Court in a case that had been removed to federal court due to Lanham Act trademark infringement claims in the original complaint. The complaint originally filed by intellectual property attorneys for the Jackson Group LLC of Indianapolis, Indiana in the Marion County Superior Court made claims of breach of fiduciary duty, fraudulent inducement, civil conspiracy, misappropriation of trade secrets and confidential and proprietary information, tortuous interference with existing and prospective business relationships, breach of contract and trademark infringement claims under the Lanham Act against defendants Touch Point One, LLC of Indianapolis, Indiana, Convergent Resources, Inc. and Dean Weathers.

After the defendants indicated to the plaintiff that they would seek removal to federal court due to the federal Lanham Act claims, the plaintiff amended its complaint to drop the trademark infringement claim. The plaintiff’s trademark infringement claim was the Marion County court’s basis for removing the case to federal court. After filing its amended complaint, the Jackson Group sought to have the case remanded back to the Marion County Superior Court since there were no longer any federal claims. While the other defendants consented to remand, Convergent opposed remand arguing that the breach of contract claim required a determination of whether trademarks or copyrights were infringed. The court, however, found that Convergent did not demonstrate that there were any actual disputed and substantial federal issues involved in the case. Therefore, the court remanded the case to the Marion County Superior Court.

Practice Tip: As the Court wrote in its order, pursuant to 28 U.S.C. § 1441(a), removal from state court to federal court “is appropriate if the Plaintiff properly could have filed the amended complaint in federal court “as a civil action ‘arising under the Constitution, laws, or treaties of the United States.” Grable & Sons Metal Products, Inc. v. Darue Engineering & Manuf., 545 U.S. 308, 312 (2005) (quoting 28 U.S.C. § 1331).” When a an intellectual property attorney makes a federal trademark, copyright or patent infringement claim in a state court case, removal to federal court is generally appropriate.

This case was assigned to Judge William T. Lawrence of the Southern District of Indiana and assigned Case No. 1:11-cv-1104-WTL-DKLOrder Granting Motion to Remand

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