Astor Chocolate Corp. v. Elite Gold Ltd.

• Decision Date: 21 December 2020
• Docket Number: 18 Civ. 11913 (PAE)
• Citation: 510 F.Supp.3d 108
• Parties: ASTOR CHOCOLATE CORP., Plaintiff, v. ELITE GOLD LTD., PT Mayora Indah TBK, Mayora Group, Mayora Co., Food Depot Corporation, Orange Grocer, Food Industries, and Takari International, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

510 F.Supp.3d 108

ASTOR CHOCOLATE CORP., Plaintiff,

v.ELITE GOLD LTD., PT Mayora Indah TBK, Mayora Group, Mayora Co., Food Depot Corporation, Orange Grocer, Food Industries, and Takari International, Inc., Defendants.

18 Civ. 11913 (PAE)

United States District Court, S.D. New York.

Signed December 21, 2020

Eric Shalyutin, John Mark Lane, Lane Crowell LLP, White Plains, NY, for Plaintiff.

Bruce Daniel Ainbinder, Littleton Park Joyce Ughetta & Kelly LLP, Purchase, NY, Douglas Hartman, Hartman Law, P.C., Boston, MA, for Defendants.

OPINION & ORDER

PAUL A. ENGELMAYER, District Judge:

Plaintiff Astor Chocolate Corp. ("Astor") brings this action against eight defendants: Elite Gold Ltd. ("Elite Gold"); PT Mayora Indah TBK ("Mayora Indah"), Mayora Group, and Mayora Co. (collectively, the "Mayora Parties"); Food Depot Corp., Orange Grocer, and Food Industries (collectively, the "Food Depot Parties"); and Takari International, Inc. ("Takari"). Astor alleges trademark infringement, unfair competition, deceptive business practices, false advertising, and injury to business reputation.

Those claims arise from Elite Gold's ownership of the registered trademark "Astor" in connection with products similar to Astor's products; the Mayora Parties’ manufacture and sale of similar products bearing the "Astor" mark, licensed from Elite Gold; Takari's purchase and distribution of those products to retailers within the United States; and the Food Depot Parties’ offering and sale of such products in online commerce in the United States.

In May, the Court stayed defendants’ motions to dismiss for lack of personal jurisdiction under Federal Rule of Civil Procedure 12(b)(2), and the Mayora Parties’ motion to dismiss for improper service of process pursuant to Federal Rule of Civil Procedure 12(b)(5), while authorizing limited jurisdictional discovery to enable the Court to resolve those motions. See Dkt. 78, published at Astor Chocolate Corp. v. Elite Gold Ltd. ("Astor I" ), No. 18 Civ. 11913 (PAE), 2020 WL 2130680, at *13 (S.D.N.Y. May 5, 2020).

Jurisdictional discovery is complete. The Court now considers, in light of that discovery, the defendants’ original motions to dismiss and the parties’ supplemental briefs. For the reasons that follow, the Court grants the motions filed by the Mayora Parties and Elite Gold, but denies the motion filed by the Food Depot Parties.

I. Background

A. Factual Background¹

The Court incorporates by reference the factual background set out in its May 5, 2020 Opinion and Order. See Astor I , 2020 WL 2130680, at *2–4. The Court provides background here only as needed to resolve the pending motions to dismiss.

1. Parties

Astor is a New York corporation with its principal place of business in New Jersey. SAC ¶ 6. Astor manufactures, wholesales, and retails chocolates and other confectionary products. Id. ¶ 1. It has continuously used its unregistered trademarks—including "Astor Chocolate" and "Astor"—in connection with those products since as early as July 19, 1950. Id.

Elite Gold is an intellectual-property holding company incorporated in the British Virgin Islands with its principal place of business in the British Virgin Islands. See Ainbinder Decl., Ex. C ("Tjay Decl.") ¶¶ 3, 8; see also SAC ¶ 7. Elite Gold has owned the mark "ASTOR," U.S. Trademark Reg. No. 4,938,707 (the "Elite Gold Mark"), since April 12, 2016, with a stated date of first use of January 1, 2012. SAC ¶ 32; see also Tjay Decl. ¶¶ 9–10. The Elite Gold Mark is registered in International Class 30 for several foodstuffs, including chocolate and a variety of chocolate products. SAC ¶ 33. Elite Gold does not directly manufacture, sell, or otherwise distribute goods or services in connection with the Elite Gold Mark. Tjay Decl. ¶ 11.

Mayora Indah is an Indonesian corporation with a principal place of business in Jakarta, Indonesia. See Second Hartman Decl., Ex. D ("Lauwrus Decl.") ¶ 3; see also SAC ¶ 8. Mayora Indah and Elite Gold are separate companies. First Hartman Decl., Ex. G ("Second Tjay Decl.") ¶¶ 3–4. But discovery has revealed that Elite Gold's only two directors, Oey Him Tjay and Wardhana Atmadia, see First Shalyutin Decl., Ex. C at 171, are also directors or commissioners of Mayora entities, see id. at 27 (Atmadia is Mayora Indah's director of operations); SAC ¶ 53 (Tjay is a commissioner of a Mayora-owned entity); Second Shalyutin Decl., Ex. E-1 at ECF p. 6 (Mayora's confirmation of same in response to interrogatory). Mayora Indah licenses the Elite Gold Mark from Elite Gold for $1, see First Shalyutin Decl., Ex. C, Ex. 4 ("License Agreement"), and manufactures and sells products branded with the Elite Gold Mark to distributors outside the United States, Lauwrus Decl. ¶¶ 4–5.

Mayora Group is a trade name for Mayora Indah and not a legal entity. Lauwrus Decl. ¶ 10; see also SAC ¶ 9. Yet Elite Gold listed "Mayora Group" as its "Licensee and Manufacturer" in its Initial Disclosure to the U.S. Patent and Trademark Office ("USPTO"). Lane Aff., Ex. B ("Initial Disclosures") at 2. There is no legal entity named Mayora Co. See Lauwrus Decl. ¶ 11.

Takari is a Canadian corporation that imports products bearing the Elite Gold Mark into the United States. SAC ¶ 14.

All three Food Depot Parties are Oklahoma corporations. Third Hartman Decl., Ex. B ("Widianto Decl.") ¶ 3. Each does business out of California. Id. ; see also SAC ¶ 13. The Food Depot Parties sell products on online marketplaces, such as Amazon.com and eFoodDepot.com. SAC ¶¶ 20–21, 69, 86.

Food Depot Corporation is the corporate name of the entity operating eFoodDepot.com. Id. ¶ 13. It is located at the same address from which goods are shipped when ordered from Orange Grocer and Food Industries online. Id. Orange Grocer and Food Industries offer and sell, under the name "Astor" on Amazon.com, products identical to the specimen used by Elite Gold in its PTO application. Id. ¶¶ 11–12. The SAC alleges that the Mayora Parties also sell similar products on those websites, but the Mayora Parties deny this, and there is no evidence in the record of sales by Mayora into New York or elsewhere. See id. ; Lauwrus Decl. ¶ 5.

The Food Depot Parties purchase "Astor"-branded products from Takari in California, and from no other person or entity. Widianto Decl. ¶¶ 4, 7; see SAC ¶ 14. They do not have any agreements, contracts, or relationship with Elite Gold or the Mayora Parties apart from through Takari. See First Shalyutin Decl., Ex. F ("Mayora Interrogatories") at 3.

2. The ASTOR Trademark

Although Astor has continually used its "Astor" trademark in connection with its products since July 19, 1950, SAC ¶ 1, it first sought to register the "Astor Chocolate" mark with the USPTO on December 13, 2017, id. ¶ 31. But on April 23, 2016, the USPTO had granted to Elite Gold the registration of the Elite Gold Mark. Id. ¶ 32. Elite Gold's application for that mark had included a specimen, which bore the Elite Gold Mark and the name "Mayora." SAC ¶ 47; see Lane Aff., Ex. F ("Elite Gold Mark Application") at 8.

Accordingly, on February 23, 2018, the USPTO denied Astor's application, in part because of the Elite Gold Mark's prior registration. SAC ¶¶ 32–33. In response, on June 3, 2018, Astor petitioned the USPTO to cancel the Elite Gold Mark's registration based on Astor's prior use. Id. ¶ 36. In Elite Gold's initial disclosures filed in connection with the proceedings on that petition, it disclosed that "Mayora Group," with U.S. offices in San Diego, California, was "Licensee and Manufacturer for Elite Gold." Id. ¶ 38; see also Initial Disclosures at 2. The USPTO has stayed those proceedings pending the outcome of this litigation. SAC ¶ 40.

3. Defendants’ Products

Astor alleges that products identical to the specimen submitted by Elite Gold in its USPTO application are being sold in online commerce through Amazon.com and eFoodDepot by sellers named "Mayora," "Orange Grocer," and "Food Industries," in violation of its own trademark in the "Astor" brand. Id. ¶¶ 48–51.

Astor alleges that these products are offered to and sold in New York. Id. ¶ 52. Discovery has revealed that the allegedly infringing products appear to reach New York through the following chain. First, Elite Gold has licensed the Elite Gold Mark to Mayora Indah for $1. See License Agreement. Second, in Indonesia, Mayora Indah manufacturers and packages the confections with the allegedly infringing mark. See Mayora Interrogatories at 8. Third, Mayora Indah sells those products to Takari, a Canadian distributor, for distribution into the United States. Id. ; Third Shalyutin Decl., Ex. K ("Gunawan Tr.") at 22. Takari appears to be Mayora Indah's sole distributor into the United States. See Gunawan Tr. at 37. But there is no agreement in place between Mayora Indah and Takari as to where Takari will ultimately sell those products, or any formal agreement at all between the two beyond their individual sales contracts. See id. at 30; Mayora Interrogatories at 8. And Mayora Indah does not receive information from Takari about to whom or where Takari then re-sells Mayora Indah products. See Gunawan Tr. at 29–30. Takari then sells the products to retailers within the United States, including the Food Depot Parties. See Widianto Decl. ¶¶ 4, 7; see also SAC ¶ 14. Finally, those retailers, including the Food Depot Parties, sell the products into various states within the United States, including New York. See First Shalyutin Decl., Ex. A, Ex. 1 ("New York Sales Records").

On December 6, 2018, and September 7, 2019, Astor's counsel placed an order for "Astor Chocolate Wafer Stick," offered by Orange Grocer and Food Industries, respectively, from Amazon.com, to be delivered to an address in New York State. Id. ¶¶ 55–61. Each product arrived in New York State a few days later. Id. ¶¶ 56, 61. The first bore both the "Astor" mark and the name "Mayora." Id. ¶ 56. It was mailed from California by Richi Widianto, president at Food Depot, Food Industries, and Orange Grocer. I...