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ONE WORLD BOTANICALS LTD. v. GULF COAST NUTRITIONA

December 10, 1997

ONE WORLD BOTANICALS LTD., a New Jersey Corporation, Plaintiff,
v.
GULF COAST NUTRITIONALS, Inc., a Florida Corporation, Defendant.



The opinion of the court was delivered by: PARELL

 PARELL, District Judge

 There are two motions presently before the Court in this matter: (1) defendant's motion to dismiss plaintiff's Complaint pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction, or in the alternative, to transfer venue pursuant to 28 U.S.C. ¬ß 1404(a) and (2) plaintiff's application for a preliminary injunction. For the reasons expressed in this Memorandum Opinion, defendant's motion to dismiss or transfer venue will be denied, and plaintiff's injunctive application will be granted.

 I. BACKGROUND

 On January 2, 1996, plaintiff One World Botanicals Ltd. ("One World"), a New Jersey Corporation, filed an intent-to-use trademark application for the mark "NOAH'S KINGDOM and Design" for pet products. (Decl. of Michael S. Katzman in Supp. of Pl.'s Mot. for Prelim. Inj. P 2 ("Katzman Decl. II.") *fn1" ) One World's mark contains the words "NOAH'S KINGDOM," combined with a design comprised of several animals and a rainbow which forms an arch above the words and animals. (Id.) The animals included in the mark are a lion, cat, dog, giraffe and elephant. (Id.) For purposes of this motion, the Court will refer to the combination of these words and design as One World's NOAH'S KINGDOM mark. It appears that One World has not yet received its Certificate of Registration for its NOAH'S KINGDOM mark from the Trademark Office. (Decl. of Arthur H. Seidel in Supp. of Pl.'s Mot. for Prelim. Inj. P 3.) ("Seidel Decl. II").) *fn2" Plaintiff's most recent communication from the Trademark Office in connection with One World's application indicates, however, that its mark will pass to registration on the Principal Register, pending minor formalities. (Id.)

 One World began using its NOAH'S KINGDOM mark as early as February 23, 1996 on various products, including food and edible treats for animals and birds. (Katzman Decl. II P 3.) In May 1996, One World expanded its usage of its NOAH'S KINGDOM mark to other pet goods, including whole life cycle multi-supplements, antioxidants, shampoos, conditioners, first aid ointments, ear washes, and acidophilus for cats and dogs. (Id.) Since those dates, One World maintains that it has continuously used its NOAH'S KINGDOM mark on these products. (Id. P 5.) One World also claims that it has advertised and sold its products under the NOAH'S KINGDOM mark in interstate commerce. (Id. P 6-7.) *fn3"

 Defendant, Gulf Coast Nutritionals, Inc., ("Gulf Coast") was incorporated in Florida on or about August 22, 1996. (Seidel Decl. I P 10.) Subsequent to One World's adoption and use of its NOAH'S KINGDOM mark, defendant, through its president and majority shareholder, Susan Weiss, created the mark NOAH'S ARK and used it in connection with the sale of various pet products, including anti-oxidants and other pet supplements. (Katzman Decl. II P 12.) Defendant's mark consists of the words NOAH'S ARK, along with a design that includes five animals and an arch above the words and animals. (Id.) The five animals included in defendant's mark are the same animals found on plaintiff's NOAH'S KINGDOM mark, namely a giraffe, cat, lion, dog and elephant. (Id.) For purposes of clarity, the Court will refer to the combination of these words and design as Gulf Coast's NOAH'S ARK mark.

  Weiss maintains that prior to her adoption of the NOAH'S ARK mark, she researched trade magazines and industry associations to determine whether anyone was using that name or something similar in connection with the sale of pet supplies. (Aff. of Susan D. Weiss in Opp'n to Pl.'s Mot. for Prelim. Inj. P 4 ("Weiss Aff. I") *fn4" ) Weiss further states that her attorney searched the records of the United States Patent and Trademark Office ("PTO") and the 50 states and did not discover anyone using that name or something similar in connection with the sale of pet supplies. (Id.)

 Shortly after defendant's use of its NOAH'S ARK mark became known to plaintiff, One World's intellectual property counsel, Arthur H. Seidel, Esq., contacted Weiss via letter dated May 5, 1997. (Seidel Decl. I, Ex. A.) Seidel stated that defendant's NOAH'S ARK mark infringed his client's NOAH'S KINGDOM mark and that use of the NOAH'S ARK mark constituted trademark infringement, federal unfair competition and common law unfair competition. (Id.) Seidel requested defendant to discontinue its use of the NOAH'S ARK mark or face possible litigation. (Id.) In response, defendant's Florida counsel, Merrill N. Johnson, Esq., contacted One World's counsel and requested an extension of time in which to respond to Seidel's May 5, 1997 letter. (Id. P 3.) Johnson agreed to the extension of time, and sent a confirmation letter on May 8, 1997. By letter dated May 14, 1997, Seidel confirmed Johnson's additional time to respond. (Id. P 5.) Enclosed with that correspondence was a copy of the file wrapper of One World's trademark application. (Id.)

 Correspondence between the parties lapsed until June 2, 1997, when Seidel received a letter dated May 30, 1997 from Johnson. (Id. P 6.) Enclosed with the letter was a Complaint for Declaratory Judgment filed by Gulf Coast against One World in the United States District Court for the Middle District of Florida, the "Florida action." (Id.; see Def.'s Br. in Supp. of Mot. to Dismiss or Transfer Venue, Ex. B. ("Def.'s Br. in Supp.").) On June 13, 1997, Michael Katzman, president of One World, signed and returned to defendant's Florida counsel a waiver of service, which was properly filed with the clerk of the court in Fort Meyers, Florida. (Def.'s Br. in Supp. at 2.)

 On June 6, 1997, approximately one week after Gulf Coast filed its Complaint in the Florida action, One World filed its Complaint in this Court. (Pl.'s Br. in Opp'n to Def.'s Mot. to Dismiss or Transfer Venue at 5 ("Pl.'s Br. in Opp'n").) In response, defendant filed its motion to dismiss this action, or in the alternative, transfer venue to the United States District Court for the Middle District of Florida. With defendant's motion pending in this Court, plaintiff filed its motion for a preliminary injunction. (See Notice of Mot. for Emerg. Order to Show Cause and Prelim. Inj.) Oral argument was heard before this Court on both motions, and both matters were taken under advisement.

 Defendant seeks dismissal of this action, arguing that plaintiff has failed to show that Gulf Coast has sufficient minimum contacts with New Jersey to support in personam jurisdiction. (See Def.'s Br. in Supp. at 2.) Defendant also contends that due to this Court's lack of jurisdiction, venue is improper. (See id.) Alternatively, defendant contends that this Court should transfer this action to the Middle District of Florida. (Id. at 6.) Plaintiff opposes the motion, arguing that the Court has in personam jurisdiction over defendant, and venue is proper here. (See Pl.'s Br. in Opp'n.)

 In support of its injunctive application, plaintiff argues: (1) a likelihood of success on the merits exists; (2) One World has suffered irreparable harm that outweighs the harm to Gulf Coast; and (3) the public interest will be served if the Court grants plaintiff's request for relief. Defendant opposes the motion.

 II. DISCUSSION

 A. Personal Jurisdiction

 The Due Process Clause of the Fourteenth Amendment

 
limits the reach of long-arm statutes so that a court may not assert personal jurisdiction over a nonresident defendant who does not have "certain minimum contacts with [the forum] such that the maintenance of the suit does not offend 'traditional notions of fair play and substantial justice.'"

 Provident Nat'l Bank, 819 F.2d at 436-37 (alteration in original) (quoting International Shoe Co. v. Washington, 326 U.S. 310, 320, 90 L. Ed. 95, 66 S. Ct. 154 (1945)). The nature of the defendant's contacts with the forum state must be such that the defendant "should reasonably anticipate being haled into court there." World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 62 L. Ed. 2d 490, 100 S. Ct. 559 (1980) (citations omitted). "It is essential in each case that there be some act by which the defendant purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws." Hanson v. Denckla, 357 U.S. 235, 253, 2 L. Ed. 2d 1283, 78 S. Ct. 1228 (1958) (citing International Shoe, 326 U.S. at 319). The purposeful availment requirement thus ensures that a defendant will not be haled into court solely as a result of "random" "fortuitous" or "attenuated" contacts, or the unilateral activity of another person. AT&T, 736 F. Supp. 1294 at 1302 (citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475, 85 L. Ed. 2d 528, 105 S. Ct. 2174 (1985)).

 The plaintiff bears the burden of demonstrating that the defendant's contacts with the forum state are sufficient to give the court in personam jurisdiction. Apollo Techs. Corp. v. Centrosphere Indus. Corp., 805 F. Supp. 1157, 1182 (D.N.J. 1992) (citations omitted); see North Penn Gas Co. v. Corning Nat'l Gas Corp., 897 F.2d 687, 689 (3d Cir.) (citation omitted), cert. denied, 498 U.S. 847, 112 L. Ed. 2d 101, 111 S. Ct. 133 (1990). The plaintiff must "sustain its burden of proof through 'sworn affidavits or other competent evidence.'" North Penn Gas, 897 F.2d at 689 (quoting Stranahan Gear Co. v. NL Indus., Inc., 800 F.2d 53, 58 (3d Cir. 1986)). In deciding whether the plaintiff has satisfied this burden, a court resolves all disputes concerning material facts in the plaintiff's favor. LaRose v. Sponco Mfg. Inc., 712 F. Supp. 455, 458 (D.N.J. 1989) (citations omitted); Catalano v. Lease & Rental Management Corp., 252 N.J. Super. 545, 548, 600 A.2d 184, 185 (Law Div. 1991) (citation omitted).

 The plaintiff may meet its burden by establishing that a court has either "specific" or "general" jurisdiction. Provident Nat'l Bank, 819 F.2d at 437. Specific jurisdiction is "invoked when the claim is related to or arises out of the defendant's contacts with the forum." Dollar Sav. Bank v. First Sec. Bank, 746 F.2d 208, 211 (3d Cir. 1984) (citations omitted). General jurisdiction is invoked when the defendant has "'continuous and systematic' contacts with the forum state.'" Provident Nat'l Bank, 819 F.2d at 437 (quoting Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 80 L. Ed. 2d 404, 104 S. Ct. 1868 (1984)).

 When a plaintiff argues that the court has specific jurisdiction over a defendant who has "no continuing presence" in the forum state, the focus must be on minimum contacts. Dollar Sav. Bank, 746 F.2d at 212 (citing Paolino v. Channel Home Ctrs., 668 F.2d 721 (3d Cir. 1981)). If "the claim pursued arises from forum related activity, the court must determine whether there are enough contacts with the forum arising out of that transaction in order to justify the assertion of jurisdiction over the out-of-state defendant." Reliance Steel Prods. Co. v. Watson, Ess, Marshall & Enggas, 675 F.2d 587, 588 (3d Cir. 1982).

 A singular contact with a forum state supports the exercise of specific jurisdiction over a defendant where the nature and quality of that contact provides a "substantial connection" with the forum. Burger King, 471 U.S. at 475 n. 18 (citing McGee v. International Life Ins. Co., 355 U.S. 220, 223, 2 L. Ed. 2d 223, 78 S. Ct. 199 (1957)); see also Zippo Mfg. Co. v. Zippo Dot Com, 952 F. Supp. 1119, 1121 (W.D. Pa. 1997) (noting that Supreme Court's focus is on the quality of defendant's contacts rather than quantity); United States Golf Ass'n. v. United States Amateur Golf Ass'n, 690 F. Supp. 317, 321 (D.N.J. 1988) ("Jurisdiction may also be conferred over nonresidents in tort cases based upon a single deliberate contact with New Jersey where that contact resulted in the alleged injury."). The Supreme Court has noted, however, that "some single or occasional acts" related to the forum may not be sufficient to establish jurisdiction "if their nature and quality and the circumstances of the commission" create only an "attenuated" affiliation with the forum. Burger King, 471 U.S. at 475 n.18 (citing Woodson, 444 U.S. 286 at 299; International Shoe, 326 U.S. at 318). The Court has drawn this distinction from the belief that, with respect to attenuated "isolated" acts, the foreseeability of litigation in the forum is slight. Id.

 Once the plaintiff establishes the requisite minimum contacts, a Court must next analyze whether the exercise of personal jurisdiction is reasonable. Woodson, 444 U.S. at 292. The exercise of jurisdiction will be reasonable if it does not offend "traditional notions of fair play and substantial justice." International Shoe, 326 U.S. at 316; see also Burger King, 471 U.S. at 477. When determining the reasonableness of a particular forum, the court must consider the burden on the defendant in light of other factors, including:

 
the forum state's interest in adjudicating the dispute; the plaintiff's interest in obtaining convenient and effective relief, at least when that interest is not adequately protected by the plaintiff's right to choose the forum; the interstate judicial system's interest in obtaining the most efficient resolution of controversies; and the shared interest of the several states in furthering fundamental substantive social policies.

 Burger King, 471 U.S. at 477.

 1. Gulf Coast's Minimum Contacts with New Jersey

 Defendant seeks to have this matter dismissed, arguing that plaintiff has failed to show that Gulf Coast has sufficient minimum contacts with New Jersey to support in personam jurisdiction. (See Def.'s Br. in Supp. at 2.) Defendant admits that it shipped goods bearing its NOAH'S ARK mark to a New Jersey mail order catalog distributor that was a customer of defendant's predecessor. (Weiss Aff. I P 5.) Nevertheless, defendant maintains that dismissal is proper because it: (1) does not have employees, officers, distributors or representatives in New Jersey; (2) does not own, possess nor use real or personal property in New Jersey; and (3) did not "purposely direct its activities towards New Jersey." (See Def.'s Br. in Supp. at 3.) Defendant argues instead that it simply placed its products in "the stream of commerce." (Id.)

 Plaintiff contends, inter alia, that Gulf Coast's contacts with New Jersey provide this Court with in personam jurisdiction over defendant. (See Pl.'s Br. in Opp.'n at 8-11.) Plaintiff argues that defendant's singular sale of pet supplies bearing the NOAH'S ARK mark to a New Jersey distributor with the intent to distribute the products throughout the Northeast region satisfies the minimum contacts standard set forth in International Shoe Co. v. Washington, 326 U.S. 310, 90 L. Ed. 95, 66 S. Ct. 154 (1945). (Id.)

 We agree with plaintiff and find that it has satisfied its burden of demonstrating that defendant has the requisite minimum contacts with New Jersey to support a finding of specific jurisdiction. *fn5" It is clear that a singular contact with a forum state can serve as the basis for a court's exercise of in personam jurisdiction over a nonresident defendant. United States Golf Ass'n, 690 F. Supp. at 321. Here, Gulf Coast admits shipping pet products bearing its NOAH'S ARK mark to a distributor of pet supplies located in New Jersey. That action was specifically directed towards New Jersey and was deliberately undertaken by Gulf Coast in response to a solicitation for its products. The shipment was a result of a telephone call to defendant from an individual who did not work in New Jersey. Following that initial contact, defendant received a faxed order from New Jersey and responded with the shipment. (Weiss Aff. I at P 5.) Defendant's consummation of that business transaction bars it from now arguing that it has not purposefully availed itself of the privilege of doing business in New Jersey. Burger King, 471 U.S. 462 at 476; see also Columbia Metal Culvert Co. v. Kaiser Indus. Corp., 526 F.2d 724, 729 (3d Cir. 1975) (applying section 8309(a)(3) of Pennsylvania long arm statute that confers jurisdiction over persons "doing business" in Pennsylvania, and holding that "[a] single shipment is sufficient to subject a foreign individual or corporation to personal jurisdiction"); Spelling-Goldberg Productions v. Bodek & Rhodes, 452 F. Supp. 452, 454 (E.D. Pa. 1978) (finding that in personam jurisdiction over non-resident defendants was proper in a trademark infringement action where defendants shipped allegedly infringing merchandise into Pennsylvania). Furthermore, because defendant's contact with the forum was direct rather than "attenuated," and because the alleged injury has been felt in New Jersey, it is foreseeable that defendant would be subjected to litigation in New Jersey. See Burger King, 471 U.S. 462 at 475 n.18 (citing Woodson 444 U.S. 286 at 299); see also Calder v. Jones, 465 U.S. 783, 789, 79 L. Ed. 2d 804, 104 S. Ct. 1482 (1984) (in defamation action, California court had personal jurisdiction over non-resident editor and author of news article; where injury caused from allegedly tortious injury was felt in California, defendants should have reasonably anticipated being haled into court in California); Indianapolis Colts v. Metropolitan Balt. Football Club, 34 F.3d 410, 413 (7th Cir. 1994) (applying similar reasoning in trademark infringement action; injury to plaintiff was felt where plaintiff resided). Thus, the requirements for specific jurisdiction are satisfied. *fn6"

 2. Traditional Notions of Fair Play and Substantial Justice

 Defendant argues that "the interests of justice favor not haling Gulf Coast into court in New Jersey under the circumstances presented." (Def.'s Reply Br. at 8.) The Court disagrees. In Zippo Manufacturing v. Zippo Dot Com Inc., 952 F. Supp. 1119 (E.D. Pa. 1997), the United States District Court for the Eastern District of Pennsylvania reasoned:

 
There can be no question that Pennsylvania has a strong interest in adjudicating disputes involving the alleged infringement of trademarks owned by resident corporations. We must also give due regard to the Plaintiff's choice to seek relief in Pennsylvania. Kulko, 436 U.S. 84 at 92. These concerns outweigh the burden created by forcing the Defendant to defend the suit in Pennsylvania, especially when [defendant] consciously chose to do business in Pennsylvania.

 Id. at 1127. This Court finds the reasoning in Zippo persuasive. As explained in section II(A)(1), Gulf Coast directed its products to New Jersey, allegedly causing harm to One World, a New Jersey corporation. Defendant consciously chose to do business in New Jersey. Thus, this forum has a strong interest in adjudicating the present dispute.

 Furthermore, defendant has not persuaded this Court that jurisdiction is unreasonable. "Once the plaintiff has made out a prima facie case in favor of personal jurisdiction, the defendant 'must present a compelling case that the presence of some other considerations would render jurisdiction unreasonable.'" Carteret Sav. Bank v. Shushan, 954 F.2d 141 at 150 (citing Woodson, 444 U.S. 286 at 292). The Court concludes that defendant has not met its burden in this regard. The fact that evidence and witnesses are located in Florida does not, by itself, make jurisdiction ...


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