United States District Court, D. New Jersey
S. Kiel, United States Magistrate Judge.
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.
THE NEW JERSEY ACTION
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.)
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.)
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'.”
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.
Tekno's Claims in the New Jersey Action
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.)
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.)
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.)
15, 2015, Ohanian registered the domain gardenglovegenie.com.
(Id.) Tekno is the owner of the website
www.buygardengenie.com. (Id. ¶ 23.)
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.)
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.)
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.)
THE GEORGIA ACTION
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
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.
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.
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.
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. 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.
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.
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.
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.
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.
THE PRESENT MOTION
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.) 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 “dismissed, ...