First to File Isn’t Always First to Finish: TGL’s Declaratory Action Dismissed in Trademark Dispute

In a recent case decision from the United States District Court from the District of Delaware, authored by Eastern District of Pennsylvania district judge Joshua D. Wolson, sitting by designation, the Court declined to exercise declaratory judgment jurisdiction in a first-filed suit filed by TGL Golf Holdings, LLC (“TGL”) against LA Golf Partners, LLC (“LAGP”) in Delaware. 

More specifically, TGL is virtual, interactive golf league featuring professional golfers, including Tiger Woods, Rory McIlroy, and others who compete in a team setting on virtual golf courses.  One of the teams in TGL is the “Los Angeles Golf Club.”  TGL owns trademarks for, among other things, “Los Angeles Golf Club,” “LA Golf Club,” and “LAGC.”

LAGP is a golf equipment and apparel company that sells golf clubs, golf balls, and LA Golf-branded clothing. It is headquartered in Southern California and owns trademarks for “LAGP,” “LA Golf Club,” and “LA Golf.”

In 2022 and 2023, after publicity began to occur regarding the concept and ultimately the launch of TGL’s league, LAGP learned of the league and the possibility that TGL would include a team named Los Angeles Golf Club. Counsel for LAGP sent a letter to TGL and the LA Golf Club team accusing them of using LAGP’s trademarks for related goods or services.  Several discussions occurred after the letter, but nothing was resolved.

On Friday, January 3, 2025, several days before the launch of TGL’s competitions, LAGP’s counsel sent another letter to TGL and the LA Golf Club requesting that TGL and the LA Golf Club cease and desist from the alleged trademark infringement.

On Monday, January 6, 2025, TGL filed this lawsuit for declaratory relief in the District of Delaware.  TGL sought a declaratory judgment of non-infringement, no false designation of origin, and no unfair competition under the Lanham Act (federal trademark act), among other claims.

On January 30, 2025, LAGP filed its own lawsuit for trademark infringement, false designation of origin, unfair competition, among other claims, in the United States District Court for the Central District of California.

Also on January 30, 2025, LAGP filed a motion to dismiss TGL’s case in Delaware asserting that it an anticipatory filing, a rush to the courthouse, in anticipation that LAGP would file its lawsuit.

When two “mirror image” lawsuits such as these are filed in different district courts, it is often the case that the “first-filed” lawsuit will be permitted to proceed, and the other lawsuit stayed or dismissed while the first case proceeds, or it will be transferred so that both cases are in one court.  There are, however, exceptions to the “first to file” rule, particularly when a filing is deemed to be anticipatory and a product of a race to the courthouse to secure a favorable venue.  In such cases, because federal courts are permitted to decline the exercise of claims for declaratory relief, there are instances in which first-filed cases are dismissed and the second-filed case is allowed to proceed.  That is precisely what occurred in the TGL case filed in Delaware.

The Court noted that, “TGL raced to this courthouse to prevent [LAGP] from filing suit in its preferred forum in California.  But the Declaratory Judgment Act is a vehicle for gaining clarity as to one’s rights amidst indefinite uncertainty – not a strategic device to gain some perceived tactical advantage.”  Slip. Op. at 13.  Finally, the Court stated, “Thus, I will decline to exercise jurisdiction over TGL’s claims and dismiss this matter.”  Id.

The Court seemed displeased with the fact that TGL knew of LAGP’s concerns yet waited until the last minute to file a declaratory relief case seeking clarification of the parties’ respective rights. The same, however, can be said of LAGP, which was not particularly aggressive in its enforcement efforts until the last minute, either.

The Court also noted that TGL could have responded to the second LAGP letter and explained its position.  That said, LAGP’s second letter seemed strategically timed to coincide with TGL’s launch, the date of which was not a secret.

Because exercise of jurisdiction over declaratory relief claims is within the Court’s discretion, it is hard to say that the Court had no basis to dismiss the case.

Nevertheless, it is not a secret that the District of Delaware is a very busy court, particularly in Wilmington. So busy, in fact, that it regularly has Eastern District of Pennsylvania judges from nearby Philadelphia sit by designation to assist with the caseload.  That was the situation here.  Judge Wolson is an Eastern District of Pennsylvania judge, not a District of Delaware judge.  So, it is possible, that the facts here presented an easy way to remove a case from the Court’s docket.  Maybe.  Maybe not.

The takeaway here is that races to the courthouse are disfavored.  Judges generally do not like them, particularly where it appears that the anticipatory filer could have acted earlier or in a different, less aggressive manner.  Clients often want to race to the courthouse, but it is not always the best move tactically.  So, a case like this may be instructive for many of us litigators.

Lastly, I have to give a major tip of the hat (or a really quiet golf clap) to Judge Wolson for sprinkling his opinion with quotes from great golf movies like Caddyshack, Tin Cup, and Happy Gilmore. Love it!