United States District Court, W.D. Texas, Austin Division
REAL SAFE AGENT, INC.
REAL SAFE TECH., INC., et al.
REPORT AND RECOMMENDATION OF THE UNITED STATES
W. AUSTIN UNITED STATES MAGISTRATE JUDGE
HONORABLE LEE YEAKEL UNITED STATES DISTRICT JUDGE
the Court are Defendants Real Safe Technologies, Inc., and
Realsaf, LLC's Amended Motion to Dismiss (Dkt. No. 12);
Plaintiff's Response (Dkt. No. 18); and Defendants'
Reply (Dkt. No. 19). The District Court referred these
Motions to the undersigned Magistrate Judge for report and
recommendation pursuant to 28 U.S.C. §636(b) and Rule
1(c) of Appendix C of the Local Rules.
a trademark case. The plaintiff-Real Safe Agent, Inc. is a
Texas corporation with its principal place of business in
Austin. The defendant-Real Safe Technologies, Inc., is a
Delaware corporation with its principal place business in New
Port Beach, California. Defendant Realsaf, LLC is a Wyoming
corporation with its principal place of business at the same
California address as Real Safe Technologies.
2015, Real Safe Agent launched the Real Safe Agent security
system and app, which is designed to help protect real estate
agents in the field. Two years later, it filed a U.S.
trademark application for the mark “REALSAFE” in
Class 036, for real estate agency services, claiming a date
of first use of January 2, 2015. Real Safe Agent also filed
an intent to use trademark application on August 4, 2017, in
Class 009 for computer software for crime prevention in
schools and on campuses.
October 2016, Realsaf, LLC filed Articles of Incorporation
with the Wyoming Secretary of State. On October 25, 2016, it
filed an intent to use trademark application for the mark
“REAL SAFE.” In the description of goods and
services, Realsaf, LLC claimed “installation,
maintenance and repair of cell phone related hardware”
under Class 037, and “installation, maintenance, and
repair of cell phone related software” under Class 042.
On that same day, Real Safe Technologies filed an intent to
use trademark application for the mark “REALSAFE”
listing the same descriptions of goods and services but also
showing date of first use as January 1, 2017, and date of
first use in commerce as May 1, 2017.
September 2017, Real Safe Technologies released its RealSafe
app to the public. The next month, an attorney for Real Safe
Technologies sent a cease and desist letter to Real Safe
Agent, claiming it was infringing Real Safe Technologies'
REALSAFE mark, and threatening to file oppositions to Real
Safe Agent's pending trademark applications. Further,
Chris Risi, the co-founder of Real Safe Technologies filed
requests with Apple and Google to have the Real Safe Agent
app removed from the iTunes and Google Play app stores,
respectively, claiming trademark infringement. Days later,
Real Safe Agent file this lawsuit, alleging claims for false
designation and dilution under 15 U.S.C. §1125,
trademark infringement and fraudulent registration under the
Texas Business & Commerce Code, common law trademark
infringement, common law unfair competition and tortious
interference with existing and prospective business
move to dismiss this action under Rule 12(b)(2) for lack of
personal jurisdiction, or under Rule 12(b)(3) for improper
venue. Alternatively, they move to transfer venue to the
District of Arizona under 28 U.S.C. § 1404(a). Real Safe
Agent concedes it cannot meet its burden to show that this
Court has jurisdiction over Defendants. It requests that the
Court not dismiss the case, and instead transfer it to the
Southern District of California, where it asserts personal
jurisdiction over Realsaf, LLC, is proper, as its principal
place of business is located in Newport Beach, California.
Defendants assert that Newport Beach is not located in the
Southern District of California.
jurisdiction is “an essential element of the
jurisdiction of a district court, without which the court is
powerless to proceed to an adjudication.” Ruhrgas
AG v. Marathon Oil Co., 526 U.S. 574, 584 (1999)
(internal quotations and alterations omitted); Sinochem
Int'l Co. v. Malaysia Int'l Shipping Corp., 549
U.S. 422, 436 (2007). A court should therefore normally
resolve personal jurisdiction issues before addressing other
matters such as improper venue. When a defendant has moved
for dismissal pursuant to Rule 12(b)(2) for lack of personal
jurisdiction, it is a plaintiff's burden to make a prima
facie showing of personal jurisdiction. Guidry v. U.S.
Tobacco Co., Inc., 188 F.3d 619, 625 (5th Cir. 1999).
Here, Real Safe Agent concedes it cannot meet its burden to
show the Court has jurisdiction over Defendants. Thus, the
claims against Defendants should be dismissed for lack of
personal jurisdiction pursuant to Rule
reasons set forth above, the Court
RECOMMENDS that the district judge
GRANT IN PART Defendants Real Safe
Technologies, Inc., and Realsaf, LLC's Amended Motion to
Dismiss (Dkt. No. 12), DISMISS
Plaintiff's Complaint WITHOUT PREJUDICE
for lack of personal jurisdiction, and DENY
the remainder of the relief requested in the Motion. It is
ORDERED that this cause of action be
REMOVED from the undersigned's docket.
parties may file objections to this Report and
Recommendation. A party filing objections must specifically
identify those findings or recommendations to which
objections are being made. The District Court need not
consider frivolous, conclusive, or general objections.
See Battle v. United States Parole Comm'n, 834
F.2d 419, 421 (5th Cir. 1987).
party's failure to file written objections to the
proposed findings and recommendations contained in this
Report within fourteen (14) days after the party is served
with a copy of the Report shall bar that party from de
novo review by the District Court of the proposed
findings and recommendations in the Report and, except upon
grounds of plain error, shall bar the party from appellate
review of unobjected-to proposed factual findings and legal
conclusions accepted by the District Court. See 28
U.S.C. § 636(b)(1)(C); Thomas v. Arn, ...