Florida ‘Ass Armor’ Trademark Case on Hold

(CN) - A Florida trademark dispute over "Ass Armor" will have to wait until another lawsuit regarding the buttocks protective gear is resolved in Maryland, a federal judge ruled.

Casey Taryn filed two trademark applications in April 2013 for the marks "Ass Armor" and "Protect Your Assets" for an protective athletic device helping to prevent injury to the buttocks and tailbone, according to the ruling. She also applied for an Ass Armor design trademark and later licensed the marks to Ass Armor LLC.

Under Armour Inc. opposed the trademarks and sued Ass Armor in Maryland federal court in January, claiming the trademarks infringe on Under Armour's "Under Armour," "Protect This House," and other registered marks. Taryn and Ass Armor filed their Florida lawsuit against Under Armour in March, claiming non-infringement.

U.S. District Judge Marcia Cooke ruled May 7 to stay the Florida case pending resolution of the Maryland lawsuit. She ruled that the "first to file" rule applies and Under Armour's Maryland forum is favored despite Ass Armor's claim for an exception to that rule.

"Ass Armor alleges that Under Armour surreptitiously filed the Maryland action in an effort to automatically stay the [trademark appeal board] proceedings and instead obtain a declaration of its rights in its home forum. Under Armour responds that the anticipatory suit exception is inapplicable here as it was unaware of any threat of suit by Ass Armor and independently sued to enjoin Ass Armor from using its mark," Cooke wrote.

"In light of these arguments, I find that Ass Armor has failed to present arguments sufficient to establish the 'compelling circumstances' required to warrant a departure from the first-to-file rule. Additionally, once a court has determined that a likelihood of substantial overlap exists between two suits, it is no longer within the second court's discretion to resolve questions of whether both suits should be allowed to proceed," she wrote.

The Florida case is administratively closed until further notice and the parties are directed by Cooke to file status reports for both the Maryland and Florida actions by June 1 and every 30 days after that.

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