UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

THE WEATHER UNDERGROUND, INC., 

a Michigan corporation,

Plaintiff,

v.

NAVIGATION CATALYST SYSTEMS, INC., 

a Delaware corporation,

Defendant.

 /

CASE NO. 09-10756

HON. MARIANNE O. BATTANI

ORDER DENYING DEFENDANT NAVIGATION CATALYST SYSTEMS, 

INC.’S OBJECTION TO MAGISTRATE JUDGE’S ORDER DENYING 

DEFENDANT’S MOTION FOR LEAVE TO FILE COUNTERCLAIM

On June 15, 2010, Magistrate Judge Virginia M. Morgan entered an Order Denying

Defendant’s Motion for Leave to File Counterclaim (Doc. No. 90). Defendant Navigation

Catalyst Systems, Inc. (NCS) objects to the ruling, which denied its request to assert a

counterclaim for cancellation of Plaintiff’s trademark WEATHER STICKER on the ground

that the term is descriptive or generic for any graphic or banner that presents weather

information on a website. The Court has reviewed the pleadings, and finds oral argument

will not aid in the resolution of this dispute. See E. D. Mich. LR 7.1(e)(2). For the reasons

that follow, Defendant’s objection is DENIED.

I. BACKGROUND

Plaintiff, Weather Underground, Inc. (“Weather Underground”), is a commercial

weather service, acting as an index for the information provided to it by multiple weather

stations. (Compl. ¶¶ 1,11-13.) Weather Underground filed suit in February 2009, alleging
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that NCS infringed its trademarks by registering domain names with various misspellings

of Plaintiff’s web properties to redirect Plaintiff’s customers to competitors and third-party

advertisers in violation of the Anti-Cybersquatting Consumer Protection, 15 U.S.C. §

1125(d), the Lanham Act, 15 U.S.C. § 1114(1), § 1125(a),and §1125(c), and state law. 

In May 2010, NCS requested leave to file a counterclaim for cancellation of Plaintiff’s

WEATHER STICKER trademark. NCS argued that leave would be in the interest of justice

that the claim was not in bad faith or futile, and would not prejudice Plaintiff unfairly. The

Magistrate Judge disagreed, finding that the factors relevant for consideration on a motion

to amend weighed against granting the motion, noting that NCS had delayed in filing the

motion and that the counterclaim would be futile given Defendant’s lack of standing. (Doc.

No. 90.) 

II. STANDARD OF REVIEW

A party may object to a magistrate judge’s nondispositive discovery orders. FED. R.

CIV. P. 72(a); 28 U.S.C. § 636(b)(1)(A). The reviewing court must affirm the magistrate

judge’s ruling unless the moving party demonstrates the ruling is “clearly erroneous" or

"contrary to law.” Id. The “clearly erroneous” standard does not empower a reviewing

court to reverse a magistrate judge's finding because it would have decided the matter

differently. See Anderson v. Bessemer City, N.C., 470 U.S. 564, 573-74 (1985). Instead,

the standard is met when despite the existence of evidence to support the finding, the

court, upon reviewing the record in its entirety, “is left with the definite and firm conviction

that a mistake has been committed.” United States v. U.S. Gypsum Co., 33 U.S. 364, 395

(1948). 
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III. ANALYSIS

Federal Rule of Civil Procedure 15(a) provides that leave to amend pleadings “shall

be freely given when justice so requires.” FED. R. CIV. P. 15(a). “However, leave to amend

is inappropriate where there is undue delay, bad faith, dilatory motive on the part of the

movant, repeated failure to cure deficiencies by amendments previously allowed, undue

prejudice to the opposing party. . .or futility of the amendment. Foman v. Davis, 371 U.S.

178, 182 (1962). 

A. Futility

A petitioner may bring a cancellation claim under § 1064 of the Lanham Act when

it establishes facts showing a 'real interest' in the proceeding. 15 U.S.C. § 1064. There

is no comprehensive list of factors that is used to establish a “real interest,” but a

cancellation petitioner must possess a personal interest in the proceeding and show the

existence of a real controversy between the parties. Star-Kist Foods, Inc. v. P.J. Rhodes

& Co., 735 F.2d 346, 349 (9th Cir. 1984) 

The petitioner [ ] must show a real and rational basis for his belief that he

would be damaged by the registration sought to be cancelled, stemming from

an actual commercial or pecuniary interest in his own mark. Interest

assertions will vary with the facts surrounding each cancellation dispute and

therefore, a petitioner's standing must be scrutinized case-by-case.

Examples of what courts have countenanced as reasonable bases are: an

assertion of a likelihood of confusion [between the petitioner's mark and the

registered mark at issue] which is not wholly without merit,. . .or. . .a rejection

of an application during prosecution. 

Id. (internal citations and quotation marks omitted).

NCS contends that the Magistrate Judge committed clear error when she applied

this restrictive standard to the issue of standing. NCS adds that it is not an intermeddler;
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it has a real interest because Plaintiff put the WEATHER STICKER mark at issue in its

Complaint. The Court disagrees. 

In contrast to other marks identified in the Complaint, there is no allegation or

evidence presented that NCS intends to use or has used the WEATHER STICKER mark.

 The fact that NCS is in the business of acquiring generic names does not alter the

analysis. Further, these facts distinguish this case from Syntex (USA ) Inc. v. E.R. Squibb

& Sons, 1990 WL 354501 (T.T.A.B. Mar. 22, 1990), and the others upon which Defendant

relies on in advancing its objection. Because NCS is not using the mark, it argues

hypothetical intent and hypothetical injury--if it wanted to acquire the domain name, which

it believes to be generic, it would be unable to do so for fear of litigation by Plaintiff. In sum,

the proposed counterclaim for cancellation does not reflect a real interest grounded in a

real controversy. Accordingly, the facts of this case present no basis for the Court to find

the Magistrate Judge’s ruling was clearly erroneous or contrary to law. 

B. Undue Delay

Magistrate Judge Morgan also concluded that NCS had unduly delayed in filing its

motion. It had actual notice of the WEATHER STICKER mark when Plaintiff filed its

Complaint in January 2009. Further, NCS included Affirmative Defenses challenging the

WEND and WUNDER marks, but failed to challenge the WEATHER STICKER mark.

The Court rejects Defendant’s characterization of its obligation and state of

knowledge relative to the timing of the filings in this case. Specifically, NCS asserts that

when it filed its answer it had no reason to know of Plaintiff’s use, use by third-parties, or

its potential challenge. Nevertheless, in support of its request for leave to file a

counterclaim, NCS attached web page printouts for Plaintiff’s web site and the results of
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a Google search using WEATHER STICKER in a generic way. Defendant certainly had

access to the same information from the time the Complaint was filed. Moreover, it

certainly had a basis for ascertaining this information in formulating its affirmative defenses.

Accordingly, even though discovery has not closed, the Magistrate Judge’s finding of undue

delay is neither clearly erroneous nor contrary to law. In addition, the Court notes that the

additional discovery that would be required relative to a counterclaim over a mark that NCS

has no intention of using could significantly delay the resolution of the dispute.

IV. CONCLUSION

In accordance with the foregoing, Defendant’s objections are DENIED.

 IT IS SO ORDERED.

s/Marianne O. Battani 

MARIANNE O. BATTANI

UNITED STATES DISTRICT JUDGE

Date: August 10, 2010

CERTIFICATE OF SERVICE

Copies of this Order were mailed and/or electronically filed to counsel of record on

this date.

s/Bernadette M. Thebolt

Case Manager