United States District Court, D. New Jersey
WILLIAM P. RUBLEY EDWARD A. CORMA SUBRANNI ZAUBER, LLC On
behalf of Plaintiff
J. SHANNON MARSHALL, DENNEHEY, WARNER, COLEMAN & GOGGIN
WOODLAND FALLS CORPORATE PARK CHERRY HILL, N.J. 08002 On
behalf of Defendants
L. HILLMAN, U.S.D.J.
matter that concerns claims of trademark infringement,
pending before the Court is Defendants' motion to dismiss
the matter for lack of personal jurisdiction. For the reasons
expressed below, Defendants' motion will be granted, and
the matter shall be transferred to the U.S. District Court
for the Eastern District of Virginia.
Powerhouse Equipment & Engineering Co, Inc., a New
Jersey-based company, claims that Defendants, Power
Mechanical, Inc. (“Power Mechanical”) and
Powerhouse Valve Services LLC (“PVS”), both based
in Virginia, have infringed on Plaintiff's mark
“Powerhouse.” Plaintiff claims that beginning in
1982, Plaintiff used “Powerhouse” as a trademark,
which has a distinctive flame logo, lettering, and color
scheme. Plaintiff claims that in October 2016, Defendant
Power Mechanical formed PVS, which Plaintiff claims markets
valve repair services, plant shutdown services, valve
inventory management, and sales of valves and parts.
Plaintiff claims that soon thereafter, PVS, and its parent
company Power Mechanical, started using the trademark
“Powerhouse Valve” which has a similar flame logo
design, lettering, and color scheme used by Plaintiff in its
September 6, 2018, this Court denied Plaintiff's motion
for a preliminary injunction. (Docket No. 19.) The Court also
dismissed without prejudice Defendants' motion to dismiss
for lack of personal jurisdiction. (Id.) The Court
directed the parties to undertake limited discovery relevant
to personal jurisdiction over Defendants. (Id.)
The parties have completed jurisdictional discovery, and
Defendants have again moved to dismiss Plaintiff's claims
against them for lack of personal jurisdiction. In the
alternative to dismissal, Defendants seek to have the case
transferred to the Eastern District of Virginia. Plaintiff
has opposed Defendants' motion, except that Plaintiff
argues that if the Court finds that personal jurisdiction is
lacking, the Court should transfer, and not dismiss, its
Subject matter jurisdiction
an action for trademark infringement, unfair competition, and
dilution of trademark arising under the Lanham Act, 15 U.S.C.
§§ 1051 et seq. Subject matter jurisdiction is
based on 15 U.S.C. § 1121 and 28 U.S.C. §§
1331 and 1338(b).
Standard for Motion to Dismiss for Lack of Personal
Rule of Civil Procedure 12(b)(2) provides for dismissal of an
action when the Court does not have personal jurisdiction
over a defendant. “Once challenged, the plaintiff bears
the burden of establishing personal jurisdiction.”
O'Connor v. Sandy Lane Hotel Co., Ltd., 496 F.3d
312, 316 (3d Cir. 2007) (citing Gen. Elec. Co. v. Deutz
AG, 270 F.3d 144, 150 (3d Cir. 2001)). In deciding a
motion to dismiss for lack of personal jurisdiction, the
Court must “accept all of the plaintiff's
allegations as true and construe disputed facts in favor of
the plaintiff.” Carteret Sav. Bank v. Shushan,
954 F.2d 141, 142 n.1 (3d Cir.), cert. denied, 506
U.S. 817 (1992) (citations omitted).
defendant is subject to the jurisdiction of a United States
district court if the defendant “is subject to the
jurisdiction of a court of general jurisdiction in the state
where the district court is located[.]” Fed.R.Civ.P.
4(k)(1)(A). “A federal court sitting in New Jersey has
jurisdiction over parties to the extent provided under New
Jersey state law.” Miller Yacht Sales, Inc. v.
Smith, 384 F.3d 93, 96 (3d Cir. 2004)(citations
omitted). The New Jersey long-arm statute “permits the
exercise of personal jurisdiction to the fullest limits of
due process.” IMO Indus., Inc. v. Kiekert AG,
155 F.3d 254, 259 (3d Cir. 1998) (citing DeJames v.
Magnificence Carriers, Inc., 654 F.2d 280, 284 (3d Cir.
the Due Process clause, the exercise of personal jurisdiction
over a non-resident defendant is appropriate when the
defendant has “certain minimum contacts with [the forum
state] such that the maintenance of the suit does not offend
‘traditional notions of fair play and substantial
justice.'” Int'l Shoe Co. v.
Washington, 326 U.S. 310, 316 (1945) (quoting
Milliken v. Meyer, 311 U.S. 457, 463 (1940)). A
defendant establishes minimum contacts by
“‘purposefully avail[ing] itself of the privilege
of conducting activities within the forum State, '”
thereby invoking “‘the benefits and protections
of [the forum State's] laws.'” Asahi Metal
Indus. Co., Ltd. v. Sup. Ct. of California, 480 U.S.
102, 109 (1987) (quoting Burger King Corp. v.
Rudzewicz, 471 U.S. 462, 475 (1985)). This
“purposeful availment” requirement assures that
the defendant could reasonably anticipate being haled into
court in the forum and is not haled into a forum as a result
of “random, ” “fortuitous” or
“attenuated” contacts with the forum state.
See World-Wide Volkswagen Corp. v. Woodson, 444 U.S.
286, 297 (1980); see also Burger King Corp., 471
U.S. at 472, 475 (internal citations omitted).
deciding whether a defendant's contacts with a forum are
sufficient to confer personal jurisdiction over that party,
the Court must consider whether such contacts are related to
or arise out of the cause of action at issue in the case. The
Court may exercise specific personal jurisdiction over a
defendant where the cause of action is related to or arises
out of activities by the defendant that took place within the
forum state. Helicopteros Nacionales de Colombia, S.A. v.
Hall, 466 U.S. 408, 414 n.8 (1984). If the cause of
action has no relationship to a defendant's contacts with
a forum state, the Court may nonetheless exercise general
personal jurisdiction if the defendant has conducted
“continuous and systematic” business activities
in the forum state. Id. at 416.
the Court determines that the defendant has minimum contacts
with the forum state, it must also consider whether the
assertion of personal jurisdiction over the defendant
“comport[s] with ‘fair play and substantial
justice'” to satisfy the due process test.
Burger King Corp., 471 U.S. at 476 (quoting
Int'l Shoe, 326 U.S. at 320). In this regard, it
must be reasonable to require the defendant to litigate the
suit in the forum state, and a court may consider the
following factors to determine reasonableness: the burden on
the defendant, the forum state's interest in adjudicating
the dispute, the plaintiff's interest in obtaining
convenient and effective relief, the interstate judicial
system's interest in obtaining an efficient resolution of
controversies, and the shared interest of the several States
in furthering fundamental substantive social policies.
Id. at 477 (citing World Wide Volkswagen,
444 U.S. at 292).
case of an intentional tort, the “effects test”
is applied. The Calder “effects
test” requires the plaintiff to show the following:
(1) The defendant committed an intentional tort;
(2) The plaintiff felt the brunt of the harm in the forum
such that the forum can be said to be the focal point of the
harm suffered by the plaintiff as a result of that tort;
(3) The defendant expressly aimed his tortious conduct at the
forum such that the forum can be said to be the focal point
of the tortious activity.
IMO Industries, Inc. v. Kiekert AG, 155 F.3d 254,
265-66 (3d Cir. 1998) (discussing Calder v. Jones,
465 U.S. 783 (1984))). “[I]n order to make out the
third prong of this test, the plaintiff must show that the
defendant knew that the plaintiff would suffer the brunt of
the harm caused by the tortious conduct in the forum, and
point to specific activity indicating that the defendant
expressly aimed its tortious conduct at the forum.”