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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF PENNSYLVANIA

––––––––––––––––––––––––––––––––––––x

:

MERISANT COMPANY, :

:

Plaintiff, :

: Civil Action No. 04-cv-5504

 v. :

: Judge Gene E.K. Pratter

McNEIL NUTRITIONALS, LLC and :

McNEIL-PPC, INC., :

:

Defendants. :

:

––––––––––––––––––––––––––––––––––––x

CORRECTED MEMORANDUM IN SUPPORT OF DEFENDANTS’ 

MOTION TO DISMISS, STAY OR TRANSFER 

Defendants McNeil Nutritionals, LLC and McNeil-PPC, Inc. (collectively 

“McNeil”) respectfully submit this Memorandum of Law in support of their motion to dismiss or 

stay this action or, in the alternative, to transfer it to another United Stated District Court where 

an earlier filed action involving the same parties and issues already is pending. Such a dismissal, 

stay or transfer will serve the interests of judicial economy and comity among courts of equal 

rank, avoid the risk of inconsistent judgments arising from the same operative facts, and respect 

the original choice of forum for the adjudication of this dispute. 

Pertinent Background Facts

McNeil markets Splenda®, the leading no-calorie sweetener in the United States.

1

 

Plaintiff Merisant Company (“Merisant”) markets several competing no-calories sweeteners, 

including Equal®, NutraSweet®, and Same®. 

 

1

 Splenda is presently marketed by defendant McNeil Nutritionals, LLC. McNeil-PPC, Inc., the 

other named defendant in this action, was the previous marketer of Splenda. McNeil-PPC, Inc. 

transferred all assets related to the Splenda business to McNeil Nutritionals, LLC, a Delaware 

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Merisant commenced this action against McNeil on November 26, 2004, alleging 

that certain claims that appear on the packaging for Splenda, and in related advertising, are false 

and misleading in violation of Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. § 1125. More 

than a week earlier, however, McNeil had commenced an action against Merisant in the United 

States District Court for the District of Puerto Rico, seeking a declaratory judgment that these 

very claims are neither false nor misleading, and do not violate the Lanham Act. Under wellsettled law in this Circuit, McNeil’s first-filed action takes precedence, and this Court should not 

entertain Merisant’s second-filed action.

Merisant’s complaint in this case, attached hereto as Exhibit A, admits that 

McNeil filed its action before Merisant’s, but alleges that McNeil’s filing in Puerto Rico was 

somehow improper. According to Merisant, by commencing suit in Puerto Rico, “McNeil [was] 

attempting to forum shop this dispute, in bad faith, in a jurisdiction far away from both its actual 

business operations and the consumers who” use Splenda. Exh. A ¶ 43. Nothing could be 

further from the truth. In fact, at the time McNeil filed its declaratory judgment action, there was 

(and still is) pending in the District of Puerto Rico another Lanham Act case between the same 

parties involving claims substantially similar to those raised here. It was this co-pending case, 

mentioned nowhere in Merisant’s pleading, that led McNeil to choose the forum that it did. The 

true facts that underlie McNeil’s declaratory judgment action and require dismissal of Merisant’s 

later-filed action are set forth below.

 

limited liability company, in June 2004. For brevity’s sake, McNeil-PPC, Inc. and McNeil 

Nutritionals, LLC are collectively referred to herein as “McNeil.”

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A. The Trade Dress Action

In December 2003, Merisant introduced for sale in Puerto Rico a new no-calorie 

sweetener in packaging that was shockingly similar to the packaging for McNeil’s Splenda. A 

side-by-side photograph of Splenda and Merisant’s copycat product, tellingly (albeit falsely) 

named “Same,” appears below.

In February 2004, McNeil sued Merisant in the United States District Court for 

the District of Puerto Rico for trade dress infringement in violation of Section 43(a) of the 

Lanham Act, 15 U.S.C. § 1125(a). McNeil’s complaint sought an injunction to stop Merisant 

from marketing its new sweetener in the above package, or any packaging likely to cause 

consumer confusion between Merisant’s product and McNeil’s. McNeil’s action, styled McNeilPPC, Inc. and Johnson & Johnson Hemisferica, S.A. v. Merisant Company and Merisant Puerto 

Rico, Inc., No. 04-1090 (JG) (the “Trade Dress Action”), was assigned to and is currently 

pending before the Hon. Jay A. Garcia-Gregory. A copy of McNeil’s Complaint in the Trade 

Dress Action is attached hereto as Exhibit B.

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On February 26, February 27, and March 2, 2004, Judge Garcia-Gregory 

conducted an evidentiary hearing on McNeil’s motion for a preliminary injunction in the Trade 

Dress Action. During the hearing, the parties introduced extensive testimony and documentary 

evidence concerning, inter alia, the market for no-calorie sweeteners, the marketing history of 

Splenda, the design and appearance of the Splenda package, and consumer perceptions of the 

Splenda package. On March 3, 2004, counsel presented oral argument in support of and in 

opposition to the motion. A transcript of the evidentiary hearing and oral arguments is attached 

hereto as Exhibit C. Thereafter, at Judge Garcia-Gregory’s request, the parties submitted 

detailed proposed findings of fact and conclusions of law. 

McNeil’s motion was granted. On July 29, 2004, Judge Garcia-Gregory entered 

an Order for Preliminary Injunction (“Order”) restraining Merisant from “manufacturing, 

distributing, importing, advertising, marketing or selling a no-calorie sweetener in packaging that 

is confusingly similar to any packaging used by plaintiffs for their Splenda product . . . .” The 

Order further required that Merisant “immediately recall from distribution” and “remove . . . 

from store shelves in Puerto Rico” the infringing products. A copy of Judge Garcia-Gregory’s 

Order for Preliminary Injunction is attached hereto as Exhibit D.

In addition to this Order, Judge Garcia-Gregory issued the same day a thorough, 

66-page opinion entitled Memorandum, Findings of Fact and Conclusions of Law Granting 

Preliminary Relief (“Opinion”). A copy of the Opinion is attached hereto as Exhibit E. The 

Opinion described in detail the market for no-calorie sweeteners in the United States, including 

the major products, their ingredients, and the packaging in which they are sold. See Exh. E, ¶¶ 1-

7. Among other things, Judge Garcia-Gregory found that Merisant had deliberately copied the 

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Splenda trade dress in order to confuse consumers and increase sales of its competing product. 

See id. ¶¶ 81-86. 

The Order and Opinion forced Merisant to expend considerable resources to recall 

its infringing products from stores in Puerto Rico and to reintroduce “Same” to consumers in 

new, revised packaging. Merisant then sought revenge.

B. Merisant’s NAD Challenge

On or about October 22, 2004, Merisant filed a sweeping challenge to McNeil’s 

packaging and advertising for Splenda with the National Advertising Division of the Council of 

Better Business Bureaus (“NAD”). Founded in 1971, NAD is a voluntary, industry selfregulatory body whose “mission is to review national advertising for truthfulness and accuracy 

and foster public confidence in the credibility of advertising.” NAD bills itself as a “low-cost 

alternative to litigation” that “adheres to a strict timetable, providing a written decision within 60 

days” after a challenge is commenced. See NAD website at www.nadreview.org. 

Merisant’s NAD challenge took issue with the “made from sugar, tastes like 

sugar” logo that prominently appears on every Splenda package, and the related advertising 

slogan, “made from sugar so it tastes like sugar,” that appears in every Splenda ad. Merisant 

alleged that these claims are literally false and/or mislead consumers to believe that Splenda 

actually contains real sugar (as opposed to a no-calorie sweetener, as the package clearly states), 

or that Splenda is a “natural” product.

The timing of Merisant’s NAD challenge was noteworthy, to say the least. The 

“made from sugar, tastes like sugar” logo and related claims have been a fixture on all Splenda 

packaging and advertising since the product was introduced to the U.S. market in 2000. Yet 

Merisant took no action to challenge these claims during the four-year period that followed. 

Moreover, the Splenda package – including the “made from sugar, tastes like sugar” logo – had 

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been scrutinized with a fine tooth comb during the proceedings in the Trade Dress Action on 

McNeil’s motion for a preliminary injunction. See, e.g., Exh. E, Findings of Fact ¶¶ 10 & 17; 

Conclusions of Law ¶49 (Opinion of Judge Garcia-Gregory, describing Splenda package and 

noting “made from sugar, tastes like sugar” logo and similar “made with sugar” banner on 

“Same” package). Merisant did not voice any objection to the logo at the preliminary injunction 

hearing or at any other time during the Trade Dress Action.

Merisant’s timing strongly suggested to McNeil that Merisant’s NAD challenge 

was filed in retaliation for the preliminary injunction and product recall that McNeil had 

obtained, and was an abuse of the NAD process. Typically, an NAD challenge concerns a new

claim for a product that appears in a new television commercial or print advertisement. If NAD 

deems the claim unsubstantiated, the advertiser generally can revise or discontinue the claim 

without major repercussions for its business. Merisant’s NAD challenge, by contrast, was 

directed at packaging and advertising claims that have helped define the Splenda brand since its 

introduction. An adverse ruling by NAD could have required McNeil promptly to alter its 

longstanding claims, potentially disrupting McNeil’s business and damaging McNeil’s thriving 

Splenda franchise. 

McNeil frequently participates in NAD proceedings, both as a challenger and as 

an advertiser, and is a strong supporter of the NAD self-regulatory process. However, McNeil 

believed that Merisant’s challenge – coming as it did on the heels of McNeil’s procurement of a 

preliminary injunction and product recall against Merisant – was retaliatory in nature. Moreover, 

McNeil concluded that it was unwilling to forego the procedural and substantive protections 

accorded to parties in Lanham Act litigation2 on a claim that, because it was raised so late, posed 

 

2 NAD rules allow for no discovery, no evidentiary hearing and no confrontation or crossexamination of opposing witnesses. See NAD Rules, attached hereto as Exhibit F. Equitable 

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a significant threat to McNeil’s business. Accordingly, McNeil declined to subject its Splenda 

packaging and promotional claims to voluntary NAD review. McNeil’s letter requesting that 

NAD close Merisant’s challenge on an administrative basis is attached hereto as Exhibit G, and 

NAD’s decision closing the case is attached as Exhibit H.

C. McNeil’s Declaratory Judgment Action

As McNeil recognized at the time, its decision to decline to participate in the 

NAD proceeding brought by Merisant did not extinguish Merisant’s false advertising claims. To 

the contrary, McNeil predicted – correctly, as it turned out – that Merisant would simply retool 

its NAD complaint and commence suit against McNeil in federal court, alleging that McNeil had 

violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Rather than wait indefinitely for 

Merisant to act, on November 18, 2004, McNeil commenced a declaratory judgment action 

against Merisant pursuant to 28 U.S.C. § 2201, seeking a declaration that McNeil’s packaging 

and advertising for Splenda are neither false nor misleading, and do not violate the Lanham Act. 

McNeil brought its action (the “Declaratory Judgment Action”) in the United States District 

Court for the District of Puerto Rico – the same Court in which the parties were already litigating 

the Trade Dress Action. A copy of McNeil’s Complaint for Declaratory Judgment is attached 

hereto as Exhibit I.

As required by applicable rules of local practice, McNeil indicated on the civil 

cover sheet that accompanied its complaint that the Declaratory Judgment Action is related to the 

Trade Dress Action pending in the same Court before Judge Garcia-Gregory. The Declaratory 

Judgment Action was randomly assigned to a different judge, but McNeil has moved that it be 

reassigned to Judge Garcia-Gregory. In its motion McNeil explained that, by virtue of his 

 

defenses generally available to litigants in court, such as laches and unclean hands, are not 

recognized in NAD proceedings.

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extensive involvement in the Trade Dress Action, Judge Garcia-Gregory has acquired substantial 

familiarity with the parties, their products and the no-calorie sweetener category in which they 

compete. Indeed, Judge Garcia-Gregory has carefully scrutinized the packaging in which the 

products are sold, including the Splenda package on which the “made from sugar, tastes like 

sugar” logo appears. Accordingly, both the parties’ interest in efficiency and the judiciary’s 

interest in economy are served by allowing Judge Garcia-Gregory to adjudicate McNeil’s 

declaratory judgment claims. A copy of McNeil’s brief in support of its motion to reassign the 

Declaratory Judgment Action to Judge Garcia-Gregory is attached as Exhibit J.

In addition, Judge Garcia-Gregory is in the best position to rule on whether 

Merisant’s claims against McNeil are barred in whole or part by the equitable doctrine of 

unclean hands. See, e.g., Highmark, Inc. v. UPMC Health Plan, Inc., 276 F.3d 160, 174 (3d Cir. 

2001) (doctrine of unclean hands is applicable in Lanham Act cases). McNeil believes that 

Merisant’s egregious copying of the Splenda trade dress in violation of the Lanham Act, as found 

by Judge Garcia-Gregory, precludes Merisant from seeking equitable relief against McNeil’s 

claims on the Splenda package. Judge Garcia-Gregory has already heard and considered the 

evidence upon which the finding against Merisant of purposeful trade dress infringement was 

based. Judge Garcia-Gregory is therefore best positioned to determine whether Merisant is 

barred from pursuing the claims it now wishes to press against McNeil.

In fact, the testimony presented to Judge Garcia-Gregory at the hearing on 

McNeil’s motion for a preliminary injunction goes directly to the bona fides of Merisant’s claims 

in this case. The “Same” product at issue in the Trade Dress Action bore a logo similar to the 

Splenda “made from sugar, tastes like sugar” logo: “MADE WITH SUGAR.” “Same” contains an 

artificial sweetener (the one found in Equal and many other products) but is “bulked” with real 

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sugar, as opposed to dextrose and maltodextrine, ingredients that are commonly used as bulking 

agents for artificial sweeteners. The sugar in “Same” offers no benefit – consumers cannot taste 

the sugar because its flavor is overwhelmed by the powerful artificial sweetener in the product. 

Nevertheless, Merisant promotes the fact that the product is made with real sugar.

At the evidentiary hearing on McNeil’s motion for a preliminary injunction, 

Merisant’s witness laid bare the reason why Merisant chose to include sugar in its “Same” 

product. Francisco Javier Cuervo-Escalona, vice president and general manager for Merisant 

Latin America, testified that Merisant used real sugar so that consumers would believe that 

“Same” was more “natural” than other artificial sweeteners. Mr. Cuervo-Escalona explained 

that, by including real sugar, Merisant hoped to create “an image of more naturalness.” See Exh. 

C (Transcript of March 2, 2004 Hearing) at 17:25; see also id. at 15:3-5, 16:5-7,18:1-7, 20:8-14, 

27:13-17, 51:10-22. In other words, Merisant has admitted the very offense of which it now 

claims McNeil is guilty: misleading consumers to think that its artificial sweetener is “natural.” 

Having purposefully (and admittedly) deceived consumers in this fashion, Merisant should not 

be heard to complain about an implied claim of “naturalness” in McNeil’s packaging and 

advertising. As noted above, Judge Garcia-Gregory, who heard and is already familiar with this 

testimony, is best situated to judge its impact on Merisant’s current false advertising claims.

D. The Instant Action

Unhappy with the prospect of litigating its Lanham Act case before a judge 

already familiar with its shenanigans, Merisant filed this action (the “Second Filed Action”) on 

November 26, 2004 – more than a week after McNeil’s Declaratory Judgment Action was filed. 

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Merisant’s complaint (Exh. A) asserts the very same Lanham Act claims that are the subject of 

McNeil’s Declaratory Judgment Action.

3

ARGUMENT

McNeil’s Declaratory Judgment Action and Merisant’s Second Filed Action 

involve identical parties and identical issues. Because the Declaratory Judgment Action was 

filed first, this Court should dismiss or stay the Second Filed Action, or transfer it to the Court 

where the Declaratory Judgment Action is pending – the United States District Court for the 

District of Puerto Rico.

I. The First-Filed Rule

It is settled law in this Circuit that, in “all cases of federal concurrent jurisdiction, 

the court which first has possession of the subject must decide it.” EEOC v. University of 

Pennsylvania, 850 F.2d 969, 971 (3d Cir. 1988) (citation omitted); see Crosley Corp. v. 

Hazeltine Corp., 122 F.2d 925 (3d Cir. 1941) (adopting the “first-filed rule”). Thus, when two 

cases involving the same parties and issues are pending in two federal courts, the court in which 

the second-filed case is pending may dismiss the action, enter a stay pending resolution of the 

first-filed action, or transfer the case to the court where the first case was filed.4See, e.g., Stone 

Creek Mechanical, Inc. v. Carnes Co., Inc., No. 02-cv-1907, 2002 WL 31424390 (E.D. Pa. Oct. 

25, 2002) (dismissing case pursuant to the first-filed rule), Servian v. Health Data Sciences 

Corp., No. 92-2693, 1992 WL 174705 (E.D. Pa. July 21, 1992) (same) and Transamerica Ins. 

Co. v. T.V. Spano Building Corp., No. 90-2836, 1990 WL 106588 (E.D. Pa. July 24, 1990)

 

3 Merisant’s complaint also includes an unfair competition claim under Pennsylvania 

common law that is based on the same facts as its Lanham Act claim.

4 The first-filed rule also empowers the court in which the first-filed case is pending to 

enjoin prosecution of proceedings in the court in which the second-filed case is pending. EEOC, 

850 F.2d at 971.

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(same); RJF Holdings III, Inc. v. Refractec, Inc., No. 03-1600, 2003 WL 22794987 (E.D. Pa. 

Nov. 24, 2003) (staying case pursuant to the first-filed rule) and Federal Ins. Co. v. W.N. 

Stevenson Co., No. 90-5078, 1990 WL 171524 (E.D. Pa. Nov. 1, 1990) (same); New View Gifts 

& Accessories, Ltd. v. Tri-Coastal Design Group, No. 02-cv-3428, 2002 WL 1896217 (E.D. Pa. 

Aug. 15, 2002) (transferring case pursuant to the first-filed rule), Communication Workers of 

America v. AT&T Paradyne Corp., No. 92-7430, 1993 WL 76214 (E.D. Pa. March 16, 1993)

(same), and Peregrine Corp. v. Peregrine Industries, Inc., 769 F. Supp. 169 (E.D. Pa. 1991)

(same).

Although application of the first-file rule is discretionary, it is strongly favored. 

The Court of Appeals has directed District Courts to depart from the rule only in the face of “rare 

or extraordinary circumstances, inequitable conduct, bad faith, or forum shopping.” EEOC, 850 

F.2d at 972.

The first-filed rule is supported by several important policy considerations. First, 

the rule “promotes comity among federal courts of equal rank” and “prevent[s] the judicial 

embarrassment of conflicting judgments.” EEOC, 850 F.2d at 971 & 977. Second, the rule

protects the right of the party who first initiates a lawsuit to “be free from the vexation of 

subsequent litigation over the same subject matter.” Crosley, 122 F.2d at 930. 

The first-filed rule also promotes judicial economy by avoiding duplicative efforts 

by multiple courts. This rationale for the rule, as articulated by the Court of Appeals more than 

half a century ago, is even more pertinent today than it was then:

The economic waste involved in duplicating litigation is obvious. 

Equally important is its adverse effect upon the prompt and

efficient administration of justice. In view of the constant increase 

in judicial business in the federal courts and the continual necessity 

of adding to the number of judges, at the expense of the taxpayers, 

public policy requires us to seek actively to avoid the waste of 

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judicial time and energy. Courts already heavily burdened with 

litigation with which they must of necessity deal should therefore 

not be called upon to duplicate each other’s work in cases

involving the same issues and the same parties.

Id. 

II. The First-Filed Rule Is Applicable Here

This case is precisely the type for which the first-filed rule was created. The 

parties involved in this Second Filed Action are identical to those in the Declaratory Judgment 

Action, which was filed first. See Exhs. A and I and n. 1. The issues raised by the two actions 

are the same.5 Merisant’s only purpose for bringing the Second Filed Action was to escape the 

jurisdiction of the Puerto Rico court – in other words, to forum shop. In circumstances such as 

these, courts in this District have not hesitated to dismiss, stay or transfer the second-filed action. 

See, e.g., RJF Holdings, 2003 WL 22794987 at *5 (staying patent infringement case pending 

resolution of a declaratory judgment action involving the same parties and issues that had been 

filed in the Central District of California); Servian, 1992 WL 174705 at *3 (dismissing a suit 

involving the issue of plaintiff’s right to sales commissions in favor of a declaratory judgment 

action defendant had filed in the Southern District of California that involved the same issue); 

Peregrine Corp., 769 F. Supp. at 174 (transferring a trademark infringement action to the Central 

District of California, where a declaratory judgment action involving the same parties and issues 

was pending). This Court should do the same.

 

5

 Indeed, all of the claims Merisant brings here are compulsory counterclaims in the Declaratory 

Judgment Action. See, e.g., RJF Holdings, 2003 WL 22794987 at *2 n.1 and Zelenofske, 1999 

WL 592399 at *2 & n.1 (discussing the relationship between the first-filed rule and FED. R. CIV.

P. 13(a)). 

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III. There Is No Basis For this Court To Depart from the First-Filed Rule 

This motion surely comes as no surprise to Merisant, which must have realized 

that its Second Filed Action was likely to be dismissed under this Circuit’s first-filed rule. For 

this reason, Merisant incorporated into its complaint a number of allegations – many of them 

false – aimed at persuading this Court to depart from the first-filed rule and to allow Merisant’s 

Second Filed Action to take precedence over McNeil’s. None of the arguments hinted at in 

Merisant’s complaint, or subsequently raised by Merisant,

6

 has merit.

A. McNeil Has Not Engaged In “Forum Shopping”

Merisant alleges that “McNeil’s filing of an anticipatory action in Puerto Rico is 

nothing more than a bad-faith attempt at forum-shopping.” Exh. A ¶ 46. The mere fact that 

McNeil filed a declaratory judgment action in anticipation of an affirmative lawsuit by Merisant

does not mean that McNeil “forum-shopped” in a way that requires a departure from the firstfiled rule. Indeed, if that were the case, the rule would never apply to a declaratory judgment 

action commenced prior to the filing of an affirmative action on the same claims. As noted 

above, courts in this Circuit routinely apply the first-filed rule to actions for declaratory 

judgment, allowing them to take precedence over subsequently filed affirmative actions on the 

same claims. See, e.g., IMS Health, Inc. v. Vality Technology, Inc., 59 F. Supp. 2d 454, 463 

(E.D. Pa. 1999) (“a district court cannot dismiss a proper declaratory judgment action merely 

because affirmative litigation is subsequently commenced elsewhere”); Zelenkofske Axelrod 

Consulting, L.L.C. v. Stevenson, No. 99-3508, 1999 WL 592399 at *2 (E.D. Pa. Aug. 5, 1999)

(“Even where the first-filed action is one for a declaratory judgment . . . the first-filed rule 

applies”) (citing Crosley, 122 F.2d at 476); Uti Corp. v. Plating Resources, Inc., No. 99-253, 

 

6 On December 13, 2004, Merisant moved to dismiss McNeil’s Declaratory Judgment 

Action on a variety of theories, including the ones alluded to in its complaint in this Court. 

McNeil has not yet responded to Merisant’s motion, and no date for argument has been set.

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1999 WL 286441 at *8 (E.D. Pa. May 7, 1999) (“The first-filed rule has . . . routinely been 

applied to cases where the first-filed case is an action for declaratory judgment”); The Pep Boys 

– Manny, Moe & Jack v. American Waste Oil Services Corp., No. 96-cv-7098, 1997 WL 367048

at *6 (E.D. Pa. June 25, 1997) (same); Fundamental Too, Ltd. v. Universal Music Group, Inc., 

MCA, Inc., No. 97-1595, 1997 WL 181255 at *5 (E.D. Pa. April 10, 1997) (“If there is to be 

more than an illusion that a federal forum is to be available for a declaratory judgment plaintiff, 

the doors to the courthouse must at some point be opened and remain open”); Fischer & Porter 

Co. v. Moorco Intern Inc., 869 F. Supp. 323, 325 (E.D. Pa. 1994) (“The first-filed rule has 

routinely been applied when the first-filed suit is an action for declaratory judgment”).

Rather, to establish improper “forum shopping,” there must be a showing that the 

plaintiff filed suit in a particular forum solely to avail itself of favorable law in that district, or to 

avoid unfavorable law in another. See, e.g., EEOC, 850 F.2d at 978 (finding that exception to 

the first-filed rule was warranted because first filer chose the district in which it filed in order to 

evade a decision in its home district, where the second filer was likely to sue, that was 

unfavorable to its position); Kim v. Kim, 324 F. Supp. 2d 628, 636 (E.D. Pa. 2004) (finding that 

no exception to the first-filed rule was warranted because, as first filers did not choose their 

forum to avoid unhelpful law or benefit from favorable law, there was no evidence that forumshopping motivated first filing); Stone Creek Mechanical, 2002 WL 31424390 at *3 (citation 

omitted) (“forum shopping is seeking out a forum solely on the basis of having the suit heard in a 

forum where the law or judiciary is more favorable to one’s cause than in another”); Zelenkofske, 

1999 WL 592399 at *3 (same); Servian, 1992 WL 174705 at *2 (“Courts which have held that a 

party’s forum shopping permits exception to the ‘first-filed’ rule have done so primarily based on 

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the determination that such actions were filed in order to avoid the law of an unfavorable 

forum”).

There is no basis for a finding of improper forum shopping here. McNeil’s 

decision to file the Declaratory Judgment Action in the District of Puerto Rico had nothing to do 

with any difference in Lanham Act law in the Third Circuit as opposed to the First Circuit. 

Rather, as explained in detail above, McNeil chose Puerto Rico because the parties were already 

engaged in Lanham Act litigation in that District, and because Judge Garcia-Gregory is already 

closely familiar with the products and packaging at issue and with Merisant’s adjudicated efforts 

to deceive purchasers of no-calorie sweeteners. “[T]o justify a disregard of the first-filed rule, 

forum shopping must be the sole reason for choosing one forum over another and thus will rarely 

be found where the first action was filed in a logical place.” Zelenkofske, 1999 WL 592399 at 

*3. McNeil’s selection of Puerto Rico as the forum for this dispute was certainly “logical” and 

cannot support a departure from the first-filed rule. 

In truth, the only party guilty of “forum shopping” here is Merisant. After all, it is 

Merisant that commenced this Second Filed Action for the sole reason that it does not wish to 

litigate its Lanham Act claims in the forum selected by McNeil – a forum that Merisant must 

believe will be less sympathetic to its claims. That is hardly a basis to depart from the first-filed 

rule.

B. Merisant’s NAD Filing Is Irrelevant

Merisant also suggests that it is the true “first filer” here because it commenced an 

NAD challenge to McNeil’s packaging and advertising before McNeil brought suit for 

declaratory judgment. The first-filed rule promotes comity among federal courts of equal rank. 

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Needless to say, the NAD – a voluntary, non-judicial forum with no power to compel 

participation in its proceedings – is not a forum with rank equal to a United States District Court.

Merisant could have invoked the compulsory process of this Court and brought 

suit against McNeil in the first instance, but it did not do so. Instead it waited four years to 

challenge the Splenda packaging and related advertising claims, and then attempted to have its 

claims heard on an expedited basis by NAD, affording McNeil no opportunity for discovery and 

depriving McNeil of important substantive defenses such as laches and unclean hands. Indeed, 

Merisant went to NAD to try to obtain a speedy ruling that, in view of its unconscionable delay, 

it knew it could never achieve in court. By doing so, Merisant took a calculated risk that McNeil 

would bring a declaratory judgment action, and forfeited the opportunity to be the “first filer” 

and select the judicial forum for this dispute. If anything, Merisant’s NAD filing weighs in favor 

of application of the first-filed rule and dismissal of its Second Filed Action.

C. “Convenience” Is Not the Test

Finally, Merisant suggests that the Second Filed Action should proceed instead of 

the Declaratory Judgment Action because Pennsylvania is a more convenient forum than Puerto 

Rico for the parties and potential third-party witnesses. Questions of convenience would be 

relevant if McNeil had moved to transfer venue pursuant to 28 U.S.C. § 1404(a); they are not 

relevant to the question of whether an exception to the first-filed rule – a principle of comity – is 

warranted. See, e.g., Communication Workers of America, 1993 WL 76214 at *2 (“the mere fact 

that the second filed suit may have been filed in a more appropriate forum does not favor 

proceeding with the second action”); Servian, 1992 WL 174705 at *2 (“considerations affecting 

a court’s ruling on a motion to transfer are distinct from those relied upon when deciding 

whether to dismiss an action based on the ‘first filed’ rule”); Transamerica Ins. Co., 1990 WL 

Case 2:04-cv-05504-GEKP Document 9 Filed 12/21/04 Page 16 of 19
17

106588 at *2 (“arguments . . . regarding relative convenience of witnesses [are appropriate] . . . 

to a motion to transfer venue under 28 U.S.C. §1404(a)” rather than a motion to dismiss, stay or 

transfer pursuant to the first-filed rule).

In any event, Merisant’s “convenience” arguments are significantly overstated. 

Merisant’s Lanham Act claims will turn largely on testimony of expert witnesses, who (1) will 

have their depositions taken in a mutually convenient location, and (2) will have to travel 

regardless of where the trial is held. The same is true of Merisant’s witnesses, who are located in 

Illinois, and of potential third party witnesses. The only party who will suffer any noticeable 

inconvenience is McNeil, who will have to transport its witnesses from Pennsylvania to Puerto 

Rico for trial. Any inconvenience associated with such travel is more than offset by the 

efficiencies of having all the current packaging and advertising disputes between these parties 

adjudicated by a single United States District Judge – Judge Garcia-Gregory of the United States 

District Court for the District of Puerto Rico – who is already familiar with the issues. 

Case 2:04-cv-05504-GEKP Document 9 Filed 12/21/04 Page 17 of 19
18

CONCLUSION

This Second Filed Action is precisely the type of case the first-filed rule was 

intended to eliminate. McNeil respectfully requests that this Court dismiss Merisant’s complaint, 

or enter a stay pending resolution of the Declaratory Judgment Action, or transfer this case to the 

District of Puerto Rico.

Dated: December 21, 2004

Respectfully submitted,

Steven A. Zalesin

Richard J. McCormick

Jennifer L. Higgins

PATTERSON, BELKNAP, WEBB & TYLER LLP

1133 Avenue of the Americas

New York, New York 10036-6710

(212) 336-2000

and

Drinker Biddle & Reath LLP

One Logan Square

18th and Cherry Streets

Philadelphia, Pennsylvania 19103-6996

(215) 988-2700

By: /s Alfred W. Putnam, Jr, 

Alfred W. Putnam, Jr.

Of Counsel:

Donna Malin, Esq.

Johnson & Johnson

Case 2:04-cv-05504-GEKP Document 9 Filed 12/21/04 Page 18 of 19
UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF PENNSYLVANIA

––––––––––––––––––––––––––––––––––––x

:

MERISANT COMPANY, :

:

Plaintiff, :

: Civil Action No. 04-cv-5504

 v. :

: Judge Gene E.K. Pratter

McNEIL NUTRITIONALS, LLC and :

McNEIL-PPC, INC., :

:

Defendants. :

:

––––––––––––––––––––––––––––––––––––x

CERTIFICATE OF SERVICE

The following papers:

CORRECTED MEMORANDUM IN SUPPORT OF DEFENDANTS’ 

MOTION TO DISMISS, STAY OR TRANSFER

was served on counsel for Merisant Company:

Abraham C. Reich

FOX ROTHSCHILD LLP

2000 Market Street, Tenth Floor

Philadelphia, PA 19103-3291

(Hand-Delivery)

Gregg F. LoCascio

KIRKLAND & ELLIS LLP

655 Fifteenth Street NW

Washington, D.C. 20005

(Federal Express)

on the date shown below.

/s David J. Kessler

David J. Kessler

Date: December 21, 2004

Case 2:04-cv-05504-GEKP Document 9 Filed 12/21/04 Page 19 of 19