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Nana Joes, LLC v. Microbiotic Health Foods, Inc.

United States District Court, E.D. Texas, Sherman Division

February 15, 2018




         Pending before the Court is Defendant's Motion to Dismiss, or in the Alternative, to Transfer Venue (Dkt. #5). Having considered the motion and the relevant pleadings, the Court finds that Defendant's motion should be granted.


         Plaintiff Nana Joes, LLC, is a California limited liability company that makes vegan and gluten-free granola, granola bars, cookies, and trail mix. Defendant Microbiotic Health Foods, Inc. d/b/a Nana's Cookie Company is a California corporation with its principle place of business in San Diego, California, which also makes cookies and other related products. On October 18, 2017, Defendant sent a cease and desist letter to Plaintiff's attorney, who was located in Texas, demanding that Plaintiff “cease using the name ‘Nana Joes' to ‘sell goods that are the same as, or closely related to, goods sold by [Defendant]. . . .'” (Dkt. #1 at p. 4 (quoting (Dkt. #1, Exhibit B))). In the letter, Defendant asserted “that doing so ‘constitutes trademark infringement and unfair competition under both state and federal laws, subjecting it to a claim by [Defendant] for monetary and injunctive relief.'” (Dkt. #1 at p. 4 (quoting (Dkt. #1, Exhibit B))).

         Based on this action, on November 1, 2017, Plaintiff filed its Complaint for Declaratory Judgment (Dkt. #1) in the Eastern District of Texas against Defendant seeking a declaration that it is not infringing any of Defendant's trademarks and that those trademarks are invalid and unenforceable. Defendant operates in California with all of its employees residing in California. Defendant engages brokers who reside in California, Nevada, Utah, Colorado, and New Mexico.[1] Defendant maintains a website,, from which Texas residents purchase Defendant's products.[2] Further, Defendant sells its products to national vendors, including T.J. Maxx, Ross Stores,, and national grocery distributors, all of which place Defendant's products for sale in stores in Texas. Defendant does not maintain any employees, office space, registrations, phone listings, inventory storage, or sales representatives in Texas.

         In response to the Complaint for Declaratory Judgment, Defendant filed its motion to dismiss for lack of personal jurisdiction on December 21, 2017 (Dkt. #5). Plaintiff filed its response on January 4, 2018 (Dkt. #8) and Defendant filed a reply on January 11, 2018 (Dkt. #10).


         Motion to Dismiss for Lack of Personal Jurisdiction - 12(b)(2)

         Federal Rule of Civil Procedure 12(b)(2) requires a court to dismiss a claim if the court does not have personal jurisdiction over the defendant. Fed.R.Civ.P. 12(b)(2). After a nonresident defendant files a motion to dismiss for lack of personal jurisdiction, the party seeking to invoke the court's jurisdiction must “present sufficient facts as to make out only a prima facie case supporting jurisdiction.” Alpine View Co. v. Atlas Copco AB, 205 F.3d 208, 215 (5th Cir. 2000). When considering the motion to dismiss, the court must accept as true the plaintiff's uncontroverted allegations and resolve factual conflicts in favor of the plaintiff. Id.

         A federal court may exercise personal jurisdiction over a nonresident defendant if (1) the forum state's long-arm statute confers personal jurisdiction over that defendant, and (2) the exercise of personal jurisdiction comports with the due process clause of the Fourteenth Amendment. Int'l Energy Ventures Mgmt., L.L.C. v. United Energy Grp., Ltd., 818 F.3d 193, 212 (5th Cir. 2016). Because the Texas long-arm statute extends as far as constitutional due process permits, a court only needs to determine whether a suit in Texas is consistent with the due process clause of the Fourteenth Amendment. Id. The due process clause requires that a court exercise personal jurisdiction over a nonresident defendant only if 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.” Id. (citing Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)). Minimum contacts with a forum state can be satisfied by contacts that give rise to either general jurisdiction or specific jurisdiction. Wilson v. Belin, 20 F.3d 644, 647 (5th Cir. 1994).

         Motion to Transfer Venue

         Section 1404 permits a district court to transfer any civil case “[f]or the convenience of parties and witnesses, in the interest of justice . . . to any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). “Section 1404(a) is intended to place discretion in the district court to adjudicate motions for transfer according to an ‘individualized, case-by-case consideration of convenience and fairness.'” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)). The purpose of 28 U.S.C. § 1404(a) “is to prevent the waste ‘of time, energy and money' and ‘to protect the litigants, witnesses and the public against unnecessary inconvenience and expense . . .'” Van Dusen, 376 U.S. at 616.

         The threshold inquiry when determining eligibility for transfer is “whether the judicial district to which transfer is sought would have been a district in which the claim could have been filed, ” or whether all parties have consented to a particular jurisdiction. In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”). Once that threshold inquiry is met, the Fifth Circuit has held that “[t]he determination of ‘convenience' turns on a number of public and private interest factors, none of which can be said to be of dispositive weight.” Action Indus., Inc. v. U.S. Fid. & Guar. Co., 358 F.3d 337, 340 (5th Cir. 2004). The private interest factors include (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; (4) all other practical problems that make trial of a case easy, expeditious and inexpensive. In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc) (“Volkswagen II”). The public interest factors include (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws or in the application of foreign law. Id. These factors are not exhaustive or exclusive, and no single factor is dispositive. Id.

         The party seeking transfer of venue must show good cause for the transfer. Volkswagen II, 545 F.3d at 315. The moving party must show that the transferee venue is “clearly more convenient” than the transferor venue. Id. The plaintiff's choice of venue is not a factor in this analysis, but rather contributes to the defendant's burden to show good cause for the transfer. Id. at 315 n.10 (“[W]hile a plaintiff has the privilege of filing his claims in any judicial division appropriate under the general venue statute, § 1404(a) tempers the effects of the exercise of this privilege.”). However, ...

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