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Tekno Products, Inc. v. Glove Trends Inc.

United States District Court, D. New Jersey

December 23, 2019

TEKNO PRODUCTS, INC., Plaintiff,
v.
GLOVE TRENDS INC., et al., Defendants.

          OPINION

          Edward S. Kiel, United States Magistrate Judge.

         This matter comes before the Court on the “Request Leave to File Motion to Dismiss for Duplicate Case, and Lack of Personal Jurisdiction” (the “Application”) of defendant Ara Ohanian (“Ohanian”). (ECF No. 75.) Plaintiff Tekno Products, Inc. (“Tekno”) opposes the Application. (ECF No. 76.) This Court has considered Ohanian's submission and the opposition thereto and decides this matter on the papers pursuant to Federal Rule of Civil Procedure 78. For the following reasons, the Application is granted insofar as it concerns a transfer of this action to the United States District Court for the Northern District of Georgia (“Georgia District Court”), and is otherwise denied.

         BACKGROUND

         I. THE NEW JERSEY ACTION

         This action (the “New Jersey Action”) was filed by Tekno on January 3, 2019. (ECF No. 1 (“Compl.”).) The complaint alleges claims for trademark infringement, false designation of origin, copyright infringement, false marking, trade libel, unfair competition, and unjust enrichment against Ohanian, Glove Trends Inc., and Alice Sevan Ohanian. (Compl. passim.) Tekno filed an amended complaint (the “Amended Complaint”) on April 1, 2019. (ECF No. 22 (“Am. Compl.”).) The Amended Complaint adds claims for conspiracy and spoliation of evidence. (Id. ¶¶ 88-99.)

         A. The Parties

         Tekno is a “marketer of direct response products and in the business of bringing useful products to the market.” (Id. ¶ 15.) It markets products “related to cookware, toys, light-duty tools, gardening tools, gadgets, household goods and the like.” (Id.)

         Ohanian is a citizen of Canada and resides in Georgia. (Id. ¶ 5.) Tekno claims that Ohanian is a “purported co-inventor and co-owner of U.S. Patent application no. 15/447, 141 for a ‘Digging Glove'.” (Id.)

         Alice Sevan Ohanian is Ohanian's mother. (ECF No. 63 at 3, lines 8-11 (June 6, 2019 Hr'g Tr.).) Magistrate Judge Leda D. Wettre recommended that her motion to dismiss for lack of personal jurisdiction be granted. (ECF No. 59.) On September 5, 2019, District Judge Susan D. Wigenton adopted Judge Wettre's recommendation and dismissed Alice Sevan Ohanian from the case. (ECF No. 65.) Accordingly, Alice Sevan Ohanian is no longer a party to the New Jersey Action.

         B. Tekno's Claims in the New Jersey Action

         In 2014, Tekno was looking to bring a gardening product to market that it called “Garden Genie.” (Am. Compl. ¶16.) The Garden Genie consists of a gardening glove with extensions on the fingertips. (Id.). The concept is not new and, according to Tekno, has been around since the 1940's. (Id.)

         In furtherance of its plan to bring the Garden Genie to market, Tekno undertook research and discovered that Ohanian was selling a similar product called the “Honey Badger.” (Id. ¶ 17.) Tekno also discovered that Ohanian had been advertising the Honey Badger glove as being “patent pending” since September 15, 2013. (Id. ¶ 18.)

         In May 2015, Tekno contacted Ohanian. Jeff Kurani, who is Tekno's co-owner, spoke with Ohanian on May 12 or 13, 2015. Tekno concluded it was not interested in doing business with Ohanian. (Id. ¶ 20.) Tekno claims that Ohanian, thereafter, followed up with numerous calls and emails to Tekno and threatened legal action. (Id. ¶ 21.) Tekno did not respond. (Id.)

         On May 15, 2015, Ohanian registered the domain gardenglovegenie.com. (Id.) Tekno is the owner of the website www.buygardengenie.com. (Id. ¶ 23.)

         Ohanian continued to send emails to and leave messages for Tekno from May to August 2015. (Id. ¶ 22.) Tekno claims that once Ohanian became aware of Tekno's marketing and selling of the Garden Genie gloves, he began a “malicious campaign against Tekno.” (Id. ¶ 25.) The campaign, Tekno claims, included false and defamatory internet publications and a YouTube video accusing Tekno of being “notorious for copyright infringement.” (Id. ¶¶ 25-27.)

         On March 2, 2016, Tekno filed an application to register the “GARDEN GENIE” mark with the United States Patent and Trademark Office (“USPTO”). (Id. ¶ 26.) Ohanian filed an application to register the “GARDEN GENIE” mark with the USPTO on April 3, 2017. (Id. ¶ 28.) Tekno claims that Ohanian's USPTO application uses identical images owned by Tekno. (Id. ¶ 29.) On November 2, 2017, Ohanian filed a Notice of Opposition with the USPTO to Tekno's application to register the “GARDEN GENIE” mark. (Id. ¶ 31.)

         Tekno claims that, thereafter, its counsel, John Rannells, purchased gloves from www.buygardengenie.com. Mr. Rannells received what Tekno purports to be a “counterfeit” copy of Tekno's Garden Genie gloves contained in a box that infringes on Tekno's copyright. (Id. ¶¶ 33, 34.) Accordingly, Tekno claims that Ohanian sells, offers to sell, distributes, promotes, and advertises gloves that infringe on Tekno's trademark, trade dress, and copyright. (Id. at 2.)

         II. THE GEORGIA ACTION

         On December 28, 2018, Ohanian simultaneously brought an action and filed an application for leave to proceed in forma pauperis (the “IFP Application”) with the Georgia District Court (the “Georgia Action”). See N.D.Ga. Civil Action No. 18-5910-AT, ECF No. 1. Ohanian attached a complaint to the IFP Application. Id., ECF No. 1-1. The complaint names Tekno as the defendant and reads:

I have “priority” of MY Trademark: “Garden Genie” which has been infringed upon by Tekno Products Inc., which is a notorious repeat offender for the same & similar Intellectual Property Infringement. This has caused me to Lose all my revenue since 2016. My Livelihood is at stake.
Currently I've been fighting to defend my Intellectual Property in TTAB, but Tekno Products Inc. has delayed as much as possible in an attempt to depleat [sic] my resources. I'm left with no other choice after THEY Threatened [sic] to sue me falsely.

Id.

         The Magistrate Judge in the Georgia District Court granted Ohanian's IFP Application. Id., ECF No. 2. The order granting the IFP Application directed the Clerk of the Court to “submit [the] case to the District Court for a frivolity determination pursuant to 28 U.S.C. § 1915.” Id. Ohanian's complaint was separately docketed on January 3, 2019. Id., ECF No. 3.

         On January 10, 2019, District Judge Amy Totenberg dismissed Ohanian's complaint without prejudice. Id., ECF No. 4. Judge Totenberg determined that the complaint failed to sufficiently plead claims for trademark and copyright infringement. Id. However, Judge Totenberg specifically noted that “[a] dismissal without prejudice does not preclude the Plaintiff from filing another complaint that does sufficiently set forth the elements of a cause of action.” Id. at 6 n.1.

         On January 31, 2019, Ohanian filed an “Amendment to Complaint for Trademark Infringement, False Designation of Origin, Copyright Infringement, False Marking, Trade Libel, Unfair Competition and Unjust Enrichment” (the “Georgia Amended Complaint”) against Tekno and Intellivision, Inc.[1] Id., ECF No. 11. The Georgia Amended Complaint alleges that Tekno has been unlawfully selling, distributing, promoting, and advertising “Garden Genie Gloves, ” in violation of Ohanian's right to the “GARDEN GENIE” mark. Id. Ohanian also claims, in the Georgia Amended Complaint, that he and Tekno have been involved in proceedings before the TTAB relating to his objection to Tekno's application to register the “GARDEN GENIE” mark. Id. ¶¶ 29-32. Count I of the Georgia Amended Complaint asserts a claim for “Willful Infringement” by Tekno. Id. ¶¶ 41-42. Count II asserts that Tekno is “Flouting The Law” by filing trademark registrations for “Garden Genie Gloves.” Id. ¶¶ 43-45. Count III asserts a claim for “False Marking.” Id. ¶ 46. Count IV asserts a claim set forth as “Georgia trade libel; Commercial disparagement, G.S.A. 2A:14 58.” Id. ¶¶ 47-50. Count V asserts a claim for “Unfair Competition and False Designation of Origin 15 U.S.C. § 1125(a).” Id. ¶¶ 51-56. Count VI asserts claims under “Trademark Infringement, GA State; Unfair Competition, G.S.A. § 56:4-1.” Id. ¶¶ 57-67. And Count VII asserts a claim for “Unjust Enrichment.” Id. ¶¶ 68-69. In addition to monetary damages, the Georgia Amended Complaint seeks an order directing Tekno and Intellivision to refrain from selling, marketing, and promoting the “Garden Genie Gloves.” Id. at 19.

         The Georgia District Court reviewed the Georgia Amended Complaint and “determine[d] that it is not entirely frivolous.” Id., ECF No. 13. Accordingly, the Georgia District Court allowed the Georgia Amended Complaint “to proceed as any other civil action.” Id. The Georgia Amended Complaint was served on Tekno on July 25, 2019. Id., ECF No. 25, ⁋ 2.

         On April 9, 2019, Ohanian filed a Motion for Leave to File Second Amended Complaint and Brief in Support in the Georgia District Court. Id., ECF No. 18. The motion sought to add six additional defendants. Id. The Georgia District Court denied the motion on June 20, 2019, holding that Ohanian “failed to offer any justification or basis to support the addition of these various claims and parties.” Id., ECF No. 23.

         Tekno filed a Motion to Dismiss Plaintiff's Amended Complaint (the “Motion to Dismiss”) on September 16, 2019 in the Georgia District Court. Id., ECF No. 30. The Motion to Dismiss seeks to dismiss Counts I (Willful Infringement), II (Flouting the Law), III (False Marking), and IV (Georgia Trade Libel) of the Amended Complaint. Id., ECF No. 30-1 at 3. Tekno also filed an Answer to Counts V, VI, and VII of the Amended Complaint on September 16, 2019. Id., ECF No. 31.

         Ohanian filed an opposition to the Motion to Dismiss on September 30, 2019. Id., ECF No. 32. Tekno filed a reply to the opposition on October 7, 2019. Id., ECF No. 34.

         III. THE PRESENT MOTION

         Following disposition of various motions filed by Ohanian in the New Jersey Action, the Court scheduled a status conference for November 6, 2019. (ECF No. 67.)[2] In response to the scheduling of the status conference, Ohanian filed a letter on October 28, 2019 for “several urgent reasons.” (ECF No. 71.) The first “reason” addressed in Ohanian's letter was a “duplicate case which was filed prior to this New Jersey case in 2018 with the Northern District of Georgia including the same parties . . . and the same causes of action AND the same trademark ‘Garden Genie Gloves'.” (Id. at 1.) Ohanian requested that the New Jersey Action be ‚Äúdismissed, ...


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