United States District Court, D. New Jersey
REPORT AND RECOMMENDATION
Dunn Wcttre United States Magistrate Judge.
matter comes before the Court on defendant's motion to
dismiss for lack of personal jurisdiction and improper venue.
ECF No. 7, Plaintiff opposes the motion. ECF No. 9. The
Honorable Susan Davis Wigenton, U.S.D.J., referred this
motion to the undersigned for a Report and Recommendation.
Having considered the parties' written submissions and
oral argument before the Court, and for good cause shown, the
Court recommends that defendant's motion to dismiss for
lack of personal jurisdiction and improper venue be
Hallmark Industries, Inc. is a New Jersey corporation engaged
in the manufacture, marketing, sale, and wholesale
distribution of jewelry. Complaint ("Compl."), ECF
No. 1 ¶¶ 4, 10. Defendant Hallmark Licensing, LLC
is a Kansas limited liability company with a principal place
of business in Kansas City, Missouri. ECF No. 7-1 ¶ 2.
It is a wholly owned subsidiary of Hallmark Cards, Inc., and
owns and licenses various marks that include the HALLMARK
mark and Crown logo Id. ¶ 10.
action is primarily an appeal from a final decision of the
Trademark Trial and Appeal Board ("TTAB") that
denied plaintiff registration of Application Nos. 77457422
and 77666333 to use the words HALLMARK and HALLMARK925 on
jewelry products, on the basis that the applications were
likely to be confused with two of defendant's registered
marks, HALLMARK RINGS and HALLMARK DIAMONDS. See
Compl. ¶¶ 2, 28-29; Hallmark Licensing, LLC v.
Hallmark Industries, Inc., Opposition No. 91211392
(T.T.A.B. May 3, 2017). In addition to seeking reversal of
the TTAB's decision, plaintiff seeks a declaratory
judgment that it, not the defendant, is the owner of the
HALLMARK RINGS and HALLMARK DIAMONDS marks. Plaintiff further
asserts claims against defendant for trademark infringement,
false designation of origin, counterfeiting, common law and
statutory unfair competition, deceptive acts and practices,
and tortious interference with economic advantage.
underlying dispute turns largely on whether plaintiff or
defendant owns the HALLMARK DIAMONDS and HALLMARK RINGS
marks. Plaintiff alleges that its predecessor in interest,
Diastar, Inc., owned these marks and that it acquired the
registrations from Diastar prior to the latter's filing
for bankruptcy in 2008. Compl. ¶¶ 31, 34, 35.
Plaintiff charges that defendant wrongfully sought to acquire
the registrations for these marks from an entity known as
Rosenthal & Rosenthal ("R&R"). Id.
¶¶ 31-38. Plaintiff contends that defendant
"knew or should have known that R&R did not own
[plaintiffs] Marks at the time it purported to purchase these
marks from R&R" and that defendant "sought to
'purchase' [plaintiffs] Marks from R&R solely in
order to manipulate the TTAB proceeding and give the false
impression to the TTAB" that it owned the registered
marks. Id. ¶¶ 38-39.
2013, plaintiff filed its applications for HALLMARK and
HALLMARK925. Id. ¶¶ 27-29. Defendant
opposed the applications, alleging likelihood of confusion
with the HALLMARK DIAMONDS and HALLMARK RINGS marks it claims
to have acquired from R&R. Id. ¶ 31. In May
2017, the TTAB granted summary judgment to defendant, finding
plaintiffs applications were likely to cause confusion with
defendant's marks. See Hallmark Licensing, LLC v.
Hallmark Industries, Inc., Opposition No. 91211392,
(T.T.A.B. May 3, 2017).
subsequently filed this action in July 2017, and defendant
filed the instant motion to dismiss in September 2017. ECF
No. 7. This Court heard oral argument of the motion on
January 11, 2018, and reserved decision.
moves to dismiss on the grounds that this Court lacks
personal jurisdiction over it and based on improper venue.
For the reasons set forth below, the undersigned recommends
the District Court find that plaintiff has not met its burden
to show personal jurisdiction exists over defendant and that
venue is improper.
defendant challenges a Court's exercise of personal
jurisdiction, the plaintiff bears the burden to prove that
jurisdiction is proper. Metcalfe v. Renaissance Marine,
Inc., 566 F.3d 324, 330-31 (3d Cir. 2009). Where the
district court does not hold an evidentiary hearing,
plaintiff must establish only & prima facie case
of personal jurisdiction. Miller Yacht Sales, Inc. v.
Smith, 384 F.3d 93, 97 (3d Cir. 2004). Under a prima
facie standard, "the plaintiffs allegations are
presumed true and all factual disputes are resolved in the
plaintiffs favor." LaSala v. Marfin Popular Bank
Pub. Co., 410 Fed.Appx. 474, 476 (3d Cir. 2011). A
plaintiff meets this burden by "establishing with
reasonable particularity sufficient contacts between the
defendant and the forum state." Display Works, LLC
v. Bartley, 182 F.Supp.3d 166, 172 (D.N.J. 2016)
(quoting Mellon Bank PSFS, Nat'l Ass 'n v.
Farino, 960 F.2d 1217, 1223 (3d Cir. 1992)). Once the
motion is made, however, and plaintiffs allegations are
challenged by affidavits or other evidence, "plaintiff
must respond with actual proofs, not mere allegations."
Patterson by Patterson v. FBI, 893 F.2d 595, 604 (3d
Cir. 1990) (citation omitted); see also Metcalfe,
566 F.3d at 330 ('"[O]nce a defendant has raised a
jurisdictional defense, ' the plaintiff must 'prov[e]
by affidavits or other competent evidence that jurisdiction
is proper."') (quoting Dayhoff Inc. v. H.J.
Heinz Co., 86 F.3d 1287, 1302 (3d Cir. 1996)). Plaintiff
must ultimately prove the existence of jurisdiction by a
preponderance of the evidence, although such a showing is
unnecessary at the preliminary stages of litigation.
LaSala, 410 Fed.Appx. at 476; Mellon Bank (E)
PSFS, Nat'l Ass 'n v. Farino, 960 F.2d
1217, 1223 (3d Cir. 1992); Display Works, LLC v.
Bartley, 182 F.Supp.3d 166, 172 (D.N.J. 2016)
Court exercises jurisdiction to the extent permitted by New
Jersey law. See Miller Yacht Sales, 384 F.3d at 96
(citing Fed.R.Civ.P. 4(e)). New Jersey's long-arm statute
permits the exercise of jurisdiction over non-residents
"to the uttermost limits permitted by the United States
Constitution." Charles Gendler Co. v. Telecom Equity
Corp.,102 N.J. 460, 469 (1986) (quoting Avdel Corp.
v. Mecure,58 N.J. 264, 268 (1971)). Therefore, "we
ask whether, under the Due Process Clause, the defendant has
certain minimum contacts with [New Jersey] such that the
maintenance of the suit does not offend traditional notions