IP Law Daily, TRADEMARK—D. Del.: Declaratory judgment action over LA golf club mark dismissed as forum shopping, (Jun 10, 2025)

By Linda O’Brien, J.D., LL.M.

New virtual golf league disputes that its “Los Angeles Golf Club” infringes golf equipment maker’s “LA Golf Club” trademark.

The filing of a declaratory judgment action by a new virtual golf entertainment company was anticipatory and designed to prevent a golf equipment manufacturer from filing its trademark infringement lawsuit against it in the manufacturer’s preferred forum in California, the federal district court in Wilmington, Delaware, has held. The first-filed rule did not apply since the company engaged in forum shopping and dismissal of its claims would avoid duplicative litigation. Thus, the golf equipment manufacturer’s motion to dismiss was granted (TGL Golf Holdings, LLC v. LA Golf Partners, LLC, No. 1:25-cv-00011-JDW (D. Del. Jun. 9, 2025)).

TGL Golf Partners, LLC, a Delaware company headquartered in Winter Park, Florida, operates a virtual, interactive golf league that was created by professional golfers Tiger Woods and Rory McIlroy and sports executive Mike McCarley in partnership with the PGA Tour. TGL has six teams of players that compete in 18-hole matches on virtual golf courses. One of the teams is the Los Angeles Golf Club and TGL holds trademarks related to the team that are used in connection with its golf services and products, including stylized versions of “Los Angeles Golf Club,” “LAGC,” and “LA Golf Club.”

LA Golf Partners, LLC, a California manufacturer of golf equipment and clothing, holds the trademarks “LAGP,” “LA Golf Club,” and “LA Golf.” When TGL announced its plans to launch its virtual golf league in October 2023, Golf Partners sent a letter to TGL and Los Angeles Golf Club accusing them of using trademarks that infringe Golf Partner’s name and trademarks and the parties had some discussions to address those concerns. TGL delayed the launch of the league competitions until January 2025. Immediately before the launch, on January 3, 2025, Golf Partners sent a final demand to TGL and LA Golf Club to cease and desist the infringement of its marks.

Shortly after receiving the final demand, on January 6, 2025, TGL filed a complaint for declaratory judgment against Golf Partners, seeking declarations of noninfringement, no false designation or origin or unfair competition, no dilution, equitable estoppel prohibiting Golf Partners from enforcing any rights, and cancellation of Golf Partner’s registration of “LA Golf Club.” On January 30, 2025, Golf Partners filed its own lawsuit in the federal district court for the Central District of California, asserting claims against TGL and LA Golf Club fir trademark infringement, unfair competition, false designation or origin, false association, false sponsorship, and false advertising in violation of the Lanham Act and California law. Before the court was Golf Partner’s motion to dismiss, or in the alternative, to transfer the matter to the Central District of California.

First-filed rule. The court found that the first-filed rule did not apply in the case because TGL engaged in forum shopping in anticipation of Golf Partner’s lawsuit. The first-filed rule is a “comity-based doctrine” that when duplicative lawsuits are filed successively in two different federal court, the court where the action was filed first is presumed to have priority. From the record, there was little doubt that TGL filed its lawsuit in anticipation of a lawsuit by Golf Partners. Golf Partner’s final demand letter threatened trademark litigation and indicated that litigation was imminent. Rather wait to be sued in California where Golf Partners is headquartered, TGL filed suit in Delaware as a “Florida court would likely not have personal jurisdiction over Golf Partners.” Given the temporal proximity between TGL’s receipt of the final demand letter and the filing of its lawsuit, there was no question that “TGL raced to the courthouse in an effort to avoid litigating on Golf Partner’s home turf,” the court explained.

TGL’s argument that business necessity drove its decision to sue was rejected. If TGL wanted clarity about the scope of its rights, the company could have filed a declaratory judgment well in advance the launch of its business. TGL knew that Golf Partners believed it was infringing its trademarks at least as of October 2023, when it received the first letter, yet no plausible explanation was offered as to why TGL waited so long to file a declaratory judgment action. The fact was that TGL “ran to the courthouse and then raced to serve the suit,” rather than engaged in any continued discussions, suggesting that its goal was to “win the race to a preferred courthouse” rather than to get clarity for its business operations.

Exercise of jurisdiction. Since the Declaratory Judgment Act was meant to get legal clarity for litigants and not to deprive a natural plaintiff of its preferred forum or guarantee the declaratory plaintiff’s own choice of venue, the court declined to exercise jurisdiction over TGL’s claims. TGL engaged in forum shopping and filed its lawsuit when it did as to try to deprive Golf Partners of its choice of forum. The avoidance of duplicative litigation also weighed in favor of dismissal of TGL’s claims. Once there was a determination that the first-file rule did not apply, then the court had no authority to stay or dismiss Golf Partner’s claims in the California action and the duplicative California case could continue, the court concluded.

The Case is No. 1:25-cv-00011-JDW.

Judge: Wolson, J.

Attorneys: Damien Nicholas Tancredi (Flaster Greenburg, P.C.) for TGL Golf Holdings, LLC. Brian P. Egan (Arsht & Tunnell LLP) for LA Golf Partners, LLC.

Companies: TGL Golf Holdings, LLC; LA Golf Partners, LLC

Cases: Trademark DelawareNews