Verizon Communications, Inc. v. Inverizon International, Inc

295 F.3d 870 (8th Cir. 2002)

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Nature of the Case

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Facts

D sent a cease and desist letter to P, demanding that it refrain from using the 'Verizon' mark because such use was likely to cause confusion with D's mark. P contacted D in an effort to resolve this matter, and neither party raised the subject of litigation. P asserted that there is no likelihood of confusion or dilution because its communications services are sufficiently distinct from D's agricultural consulting services. D's trademark counsel disagreed, indicating that there was an overlap in the 'wireless business' provided by the companies. P asked for clarification of and details pertaining to this asserted overlap in services, but D provided nothing. P filed this declaratory judgment suit in federal district court in Missouri. P sought a declaration that the use of its mark does not infringe upon D's rights or constitute unfair competition in violation of the Lanham Act or various state statutes. Six weeks later, D filed suit against P in Missouri state court, expressly denying that it was seeking any relief under federal law. D then moved to dismiss or stay the federal action on the basis of the pending state court action. P filed a motion in state court to dismiss the state action in light of the federal suit. The federal district court granted D's motion to stay the federal proceedings. Subsequently, the state court denied P's motion to dismiss the state court action, relying heavily on the federal court's decision to abstain. P appealed the district court's decision to stay the federal declaratory judgment action.