Adams, Nash & Haskell, Inc. v. United States

• Decision Date: 19 March 2020
• Docket Number: Civil Action No.: 2:19-cv-03529
• Parties: ADAMS, NASH & HASKELL, INC., Plaintiff, v. UNITED STATES OF AMERICA, Defendant.
• Court: U.S. District Court — District of New Jersey

ADAMS, NASH & HASKELL, INC., Plaintiff, v. UNITED STATES OF AMERICA, Defendant.

Civil Action No.: 2:19-cv-03529

UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY

March 19, 2020

NOT FOR PUBLICATION

OPINION

CECCHI, District Judge.

This matter comes before the Court on the motion of Defendant the United States of America ("Defendant") (ECF No. 7), to dismiss Plaintiff Adams, Nash & Haskell, Inc.'s ("Plaintiff" or "ANH") Amended Complaint (ECF No. 5, "Am. Compl."). Defendant moves to dismiss this action for improper venue under Federal Rule of Civil Procedure 12(b)(3), or alternatively, to transfer venue to the District of Columbia under 28 U.S.C. § 1404(a). Defendant also moves to dismiss Count IV of the Amended Complaint for lack of subject matter jurisdiction pursuant to Rule 12(b)(1) and Count II for failure to state a claim pursuant to Rule 12(b)(6). The Court decides the motion without oral argument. See Fed. R. Civ. P. 78(b). For the reasons set forth below, the Court finds that venue in this District is improper and will transfer this matter to the United States District Court for the District of Columbia under 28 U.S.C. § 1406(a).

I. BACKGROUND

Plaintiff brings this action against Defendant for trademark infringement. Am. Compl. ¶ 1. Plaintiff ANH is an Ohio Corporation and maintains its principal place of business in Kentucky. Id. ¶ 2. ANH is a labor relations strategist and conducts employee opinion surveys for its clients. Id. ¶¶ 7-8. ANH owns the service mark "VIEWPOINT" (trademark Registration No. 1,828,538), which it uses on its surveys. Id. ¶¶ 9-10. Defendant is the United States of America. Id. ¶ 3. Plaintiff alleges that Defendant used Plaintiff's trademark without permission on Defendant's federal employee surveys created by the U.S. Office of Personnel Management ("OPM"), which is headquartered in Washington, D.C. Id. at 4, 13; ECF No. 7-1 at 1. The Amended Complaint raises five causes of action against Defendant for violations of federal and state trademark law. Am. Compl. ¶¶ 14-32. Plaintiff claims likelihood of confusion, mistake, and/or deception, damage to its goodwill and business reputation, and monetary damages. Id. ¶¶ 16, 19, 22, 27, 29, 32.

Defendant filed the instant motion to dismiss the Amended Complaint for lack of waiver of sovereign immunity under Rule 12(b)(1) and failure to plead false designation under Rule 12(b)(6). ECF No. 7-1 at 1. Defendant also moved to dismiss the case for improper venue under Rule 12(b)(3), or, in the alternative, to transfer venue to the District of Columbia under 28 U.S.C. § 1404(a). Id. Plaintiff opposed the motion (ECF No. 8), and Defendant replied (ECF No. 9).

II. LEGAL STANDARD

An action may be dismissed for improper venue under Federal Rule of Civil Procedure 12(b)(3). In deciding a Rule 12(b)(3) motion, the court accepts the allegations in the complaint as true unless they are contradicted by the defendant's affidavits. See Bockman v. First Am. Mktg. Corp., 459 F. App'x 157, 158 n.1 (3d Cir. 2012).

A case can be transferred under either 28 U.S.C. § 1404(a) or § 1406(a). See Jumara v. State Farm Ins. Co., 55 F.3d 873, 878 (3d Cir. 1995). To determine which provision applies, the court first ascertains whether venue is proper in the original forum. See Lafferty v. St. Riel, 495 F.3d 72, 78 (3d Cir. 2007). In cases against the United States or an agency of the United States, venue is proper in any judicial district where: "(A) a defendant in the action resides, (B) a substantial part of the events or omissions giving rise to the claim occurred . . . , or (C) the plaintiff resides if no real property is involved in the action." 28 U.S.C. § 1391(e)(1).

Section 1404(a) governs transfer when venue is proper in both the original forum and the requested forum. See 28 U.S.C. § 1404(a) ("[A] district court may transfer any civil action to any other district . . . where it might have been brought."). Conversely, § 1406(a) governs transfer when venue in the original forum is improper. See 28 U.S.C. § 1406(a). Under § 1406(a), a court can sua sponte transfer or dismiss the case if it determines that venue is improper. See Decker v. Dyson, 165 F. App'x 951, 954 n.3 (3d Cir. 2006).

III. DISCUSSION

Defendant moves to dismiss for improper venue under Rule 12(b)(3), or to transfer to the District of Columbia under 28 U.S.C. § 1404(a) (ECF No. 7), arguing that Plaintiff's "focus on alleged activity in New Jersey does not mean that a substantial part of the relevant conduct occurred []here." ECF No. 9 at 2. The Amended Complaint did not identify a basis for venue. Am. Compl. ¶¶ 4-6. Plaintiff's opposition stated that venue is proper under § 1391(e)(1)(B) because "a substantial part of the events giving rise to [its] claims occurred in this district." ECF No. 8 at 2. For the reasons set forth below, the Court finds that transfer under § 1404(a) is inappropriate because venue in this District is improper and will instead analyze transfer under § 1406(a).

A. Venue

The Court finds that venue in this District is not proper under § 1391(e)(1)(B) because Plaintiff's allegations in support of venue in New Jersey are conclusory and unsubstantiated.

1. Establishing Venue Under § 1391(e)

Although Plaintiff only cites § 1391(e)(1)(B) as the basis for venue, the Court also notes that neither § 1391(e)(1)(A) (defendant's residence) nor § 1391(e)(1)(C) (plaintiff's residence if no real property is involved) support venue in this District. For purposes of § 1391(e)(1)(A), the United States and its agencies reside in Washington, D.C. See Reuben H. Donnelley Corp. v. FTC,580 F.2d 264, 267 (7th Cir. 1978) (stating that the federal government generally resides in the District of Columbia only); Downey v. United States, No. 19-406, 2019 WL 4143288, at *4 (D. Haw. Aug. 30, 2019). Here, the only named defendant, the United States, resides in the District of Columbia, and thus venue cannot lie in New Jersey under subsection (A). For purposes of § 1391(e)(1)(C), an entity-plaintiff resides "only in the judicial district in which it maintains its principal place of business." § 1391(c)(2). Here, Plaintiff maintains its principal place of business in Kentucky. Am. Compl. ¶ 2. Thus, venue does not lie in this District under subsection (C) because Plaintiff does not maintain its principal place of business in New Jersey.

Under § 1391(e)(1)(B), the requirement that a substantial part of the events giving rise to the claim occur in the chosen forum, "limits venue to those districts in which 'a considerable portion of the events took place.'" E.V. v. Robinson, 200 F. Supp. 3d 108, 113 (D.D.C. 2016) (quoting Perlmutter v. Varone, 59 F. Supp. 3d 107, 110 (D.D.C. 2014)). The plaintiff "must show that a considerable portion of the events took place in their chosen forum." Perlmutter, 59 F. Supp. 3d at 110. To determine whether a plaintiff has met the substantial part requirement, "courts should undertake a 'commonsense appraisal' of the 'events having operative significance in the case.'" Id. at 111 (quoting Lamont v. Haig, 590 F.2d 1124, 1134 & n.62 (D.C. Cir. 1978)). To establish venue under § 1391(e)(1)(B), a court must find that the activities in the chosen forum "played a substantial role in the circumstances leading up to the plaintiff's claim." Crowe & Dunlevy, P.C. v. Stidham, 609 F. Supp. 2d 1211, 1221 (N.D. Okla. 2009). To determine whether the events are substantial, courts look to the "nature of the dispute." Cottman Transmission Sys., Inc. v. Martino, 36 F.3d 291, 295 (3d Cir. 1994).

Here, the venue analysis under § 1391(e)(1)(B) turns on whether a substantial part of the events giving rise to Plaintiff's trademark claims occurred in New Jersey. In support of itsargument, Plaintiff states that "agencies of the United States of America that are engaging in the conduct complained of . . . are located in New Jersey," and lists sixteen agencies in New Jersey. Am. Compl. ¶ 6. Plaintiff's claim is that OPM sent surveys to agencies in this District. Id.; ECF No. 8 at 4. Even though Plaintiff chose to focus its factual allegations on New Jersey, the OPM survey was sent to federal agencies nation-wide. See Am. Compl. at 13; see also Declaration of Kimberly Wells, OPM, ECF No. 7-2 at 1-3. Plaintiff admits that the alleged infringement "is much more widespread" than New Jersey, claiming that "at least 415 agencies of the Defendant have used ANH's Viewpoint trademark, constituting hundreds of thousands of infringing uses by thousands of Defendant's employees." ECF No. 8 at 14; see Am. Compl. at 6. Yet Plaintiff failed to explain how the OPM surveys sent to New Jersey were a substantial part of all surveys OPM sent to federal employees. See Maxtak Capital Advisors LLC v. ParkerVision, Inc., No. 11-7549, 2012 WL 4673244, at *4 (D.N.J. Oct.1, 2012) (according plaintiffs' choice of forum less weight without evidence that defendant's conduct was "specifically directed to New Jersey as opposed to the market at large"); Davies Precision Machining, Inc. v. Def. Logistics Agency, 825 F. Supp. 105, 106 (E.D. Pa. 1993); cf. One World Botanicals Ltd. v. Gulf Coast Nutritionals, Inc., 987 F. Supp. 317, 323-24 (D.N.J. 1997) (finding venue proper in New Jersey where defendant specifically directed its activities by shipping infringing products to a distributor); Unix Sys. Laboratories, Inc. v. Berkeley Software Design, Inc., No. 92-1667, 1993 WL 414724, at *11 (D.N.J. Mar. 3, 1993) (denying Rule 12(b)(3) motion without "evidence that any state received substantially more solicitations or distributions than New Jersey").

Looking to the nature of this trademark case, the Court cannot infer that the alleged events in New Jersey were substantial or have operative significance in the case. Plaintiff merely listed sixteen purported federal agency offices in New Jersey. See Am. Compl. ¶ 6; ECF No. 8 at 4.Using Plaintiff's logic, its trademark was infringed in every district in which a federal agency office received...