United States District Court, E.D. Texas, Sherman Division
MEMORANDUM OPINION AND ORDER
L. MAZZANT UNITED STATES DISTRICT JUDGE
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.
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,
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. Defendant maintains a website,
http://www.nanascookiecompany.com, from which Texas
residents purchase Defendant's products. Further,
Defendant sells its products to national vendors, including
T.J. Maxx, Ross Stores, Amazon.com, 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.
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).
to Dismiss for Lack of Personal Jurisdiction -
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
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).
to Transfer Venue
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.
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.
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, ...