One World Botanicals v. Gulf Coast Nutritionals

• Decision Date: 10 December 1997
• Docket Number: No. Civ.A. 97-3153 MLP.,Civ.A. 97-3153 MLP.
• Parties: ONE WORLD BOTANICALS LTD., a New Jersey Corporation, Plaintiff, v. GULF COAST NUTRITIONALS, INC., a Florida Corporation, Defendant.
• Court: U.S. District Court — District of New Jersey

987 F.Supp. 317

ONE WORLD BOTANICALS LTD., a New Jersey Corporation, Plaintiff, v. GULF COAST NUTRITIONALS, INC., a Florida Corporation, Defendant.

No. Civ.A. 97-3153 MLP.

United States District Court, D. New Jersey.

December 10, 1997.

COPYRIGHT MATERIAL OMITTED

Arthur H. Seidel, Michael F. Snyder, Seidel, Gonda, LaVorgna & Monaco, P.C., Philadelphia, PA, Frank S. Gaudio, Miller & Gaudio, Red Bank, NJ, for plaintiff.

Brenda F. Engel, Backes & Hill, Trenton, NJ, for defendant.

MEMORANDUM OPINION

PARELL, District Judge.

There are two motions presently before the Court in this matter: (1) defendant's motion to dismiss plaintiff's Complaint pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction, or in the alternative, to transfer venue pursuant to 28 U.S.C. § 1404(a) and (2) plaintiff's application for preliminary injunction. For the reasons expressed in this Memorandum Opinion, defendant's motion to dismiss or transfer venue will be denied, and plaintiff's injunctive application will be granted.

I. BACKGROUND

On January 2, 1996, plaintiff One World Botanicals Ltd. ("On World"), a New Jersey Corporation, filed an intent-to-use trademark application for the mark "NOAH'S KINGDOM and Design" for pet products. (Decl. of Michael S. Katzman in Supp. of Pl.'s Mot. for Prelim. Inj. ¶ 2 ("Katzman Decl. II")¹.) One World's mark contains the words "NOAH'S KINGDOM," combined with a design comprised of several animals and a rainbow which forms an arch above the words and animals. (Id.) The animals included in the mark are a lion, cat, dog, giraffe and elephant. (Id.) For purposes of this motion, the Court will refer to the combination of these words and design as One World's NOAH'S KINGDOM mark. It appears that One World has not yet received its Certificate of Registration for its NOAH'S KINGDOM mark from the Trademark Office (Decl. of Arthur H. Seidel in Supp. of Pl.'s Mot. for Prelim. Inj. ¶ 3.) ("Seidel Decl. II").)² Plaintiff's most recent communication from the Trademark Office in connection with One World's application indicates, however, that its mark will pass to registration on the Principal Register, pending minor formalities. (Id.)

One World began using its NOAH'S KINGDOM mark as early as February 23, 1996 on various products, including food and edible treats for animals and birds. (Katzman Decl. II ¶ 3.) In May 1996, One World expanded its usage of its NOAH'S KINGDOM mark to other pet goods, including whole life cycle multi-supplements, antioxidants, shampoos, conditioners, first aid ointments, ear washes, and acidophilus for cats and dogs. (Id.) Since those dates, One World maintains that it has continuously used its NOAH'S KINGDOM mark on these products. (Id. ¶ 5.) One World also claims that it has advertised and sold its products under the NOAH'S KINGDOM mark in interstate commerce. (Id. ¶ 6-7.)³

Defendant, Gulf Coast Nutritionals, Inc., ("Gulf Coast") was incorporated in Florida on or about August 22, 1996. (Seidel Decl. I ¶ 10.) Subsequent to One World's adoption and use of its NOAH'S KINGDOM mark, defendant, through its president and majority shareholder, Susan Weiss, created the mark NOAH'S ARK and used it in connection with the sale of various pet products, including anti-oxidants and other pet supplements. (Katzman Decl. II ¶ 12.) Defendant's mark consists of the words NOAH'S ARK, along with a design that includes five animals and an arch above the words and animals. (Id.) The five animals included in defendant's mark are the same animals found on plaintiff's NOAH'S KINGDOM mark, namely a giraffe, cat, lion, dog and elephant. (Id.) For purposes of clarity, the Court will refer to the combination of these words and design as Gulf Coast's NOAH'S ARK mark.

Weiss maintains that prior to her adoption of the NOAH'S ARK mark, she researched trade magazines and industry associations to determine whether anyone was using that name or something similar in connection with the sale of pet supplies. (Aff. of Susan D. Weiss in Opp'n to Pl.'s Mot. for Prelim. Inj. ¶ 4 ("Weiss Aff. I")⁴.) Weiss further states that her attorney searched the records of the United States Patent and Trademark Office ("PTO") and the 50 states and did not discover anyone using that name or something similar in connection with the sale of pet supplies. (Id.)

Shortly after defendant's use of its NOAH'S ARK mark became known to plaintiff, One World's intellectual property counsel, Arthur H. Seidel, Esq., contacted Weiss via letter dated May 5, 1997. (Seidel Decl. I, Ex. A.) Seidel stated that defendant's NOAH'S ARK mark infringed his client's NOAH'S KINGDOM mark and that use of the NOAH'S ARK mark constituted trademark infringement, federal unfair competition and common law unfair competition. (Id.) Seidel requested defendant to discontinue its use of the NOAH'S ARK mark or face possible litigation. (Id.). In response, defendant's Florida counsel, Merrill N. Johnson, Esq., contacted One World's counsel and requested an extension of time in which to respond to Seidel's May 5, 1997 letter. (Id. ¶ 3.) Johnson agreed to the extension of time, and sent a confirmation letter on May 8, 1997. By letter dated May 14, 1997, Seidel confirmed Johnson's additional time to respond. (Id. ¶ 5.) Enclosed with that correspondence was a copy of the file wrapper of One World's trademark application. (Id.)

Correspondence between the parties lapsed until June 2, 1997, when Seidel received a letter dated May 30, 1997 from Johnson. (Id. ¶ 6.) Enclosed with the letter was a Complaint for Declaratory Judgment filed by Gulf Coast against One World in the United States District Court for the Middle District of Florida, the "Florida action." (Id.; see Def.'s Br. in Supp. of Mot. to Dismiss or Transfer Venue, Ex. B. ("Def.'s Br. in Supp.").) On June 13, 1997, Michael Katzman, president of One World signed and returned to defendant's Florida counsel a waiver of service, which was properly filed with the clerk of the court in Fort Meyers, Florida. (Def.'s Br. in Supp. at 2.)

On June 6, 1997, approximately one week after Gulf Coast filed its Complaint in the Florida action, One World filed its Complaint in this Court. (Pl.'s Br. in Opp'n to Def.'s Mot. to Dismiss or Transfer Venue at 5 ("Pl.'s Br. in Opp'n").) In response, defendant filed its motion to dismiss this action, or in the alternative, transfer venue to the United States District Court for the Middle District of Florida. With defendant's motion pending in this Court, plaintiff filed its motion for a preliminary injunction. (See Notice of Mot. for Emerg. Order to Show Cause and Prelim. Inj.) Oral argument was heard before this Court on both motions, and both matters were taken under advisement.

Defendant seeks dismissal of this action, arguing that plaintiff has failed to show that Gulf Coast has sufficient minimum contacts with New Jersey to support in personam jurisdiction. (See Def.'s Br. in Supp. at 2.) Defendant also contends that due to this Court's lack of jurisdiction, venue is improper. (See id.) Alternatively, defendant contends that this Court should transfer this action to the Middle District of Florida. (Id. at 6.) Plaintiff opposes the motion, arguing that the Court has in personam jurisdiction over defendant, and venue is proper here. (See Pl.'s Br. in Opp'n.)

In support of its injunctive application, plaintiff argues: (1) a likelihood of success on the merits exists; (2) One World has suffered irreparable harm that outweighs the harm to Gulf Coast; and (3) the public interest will be served if the Court grant's plaintiff's request for relief. Defendant opposes the motion.

II. DISCUSSION

A. Personal Jurisdiction

Rule 4(e) of the Federal Rules of Civil Procedure allows a district court sitting in diversity to assert personal jurisdiction over a non-resident defendant to the extent permitted by the law of the state where the district court sits. New Jersey's long-arm rule, N.J. Civil Practice Rule 4:4-4, has been interpreted to permit jurisdiction over a non-resident defendant to the "uttermost limits permitted by the United States Constitution." Avdel Corp. v. Mecure, 58 N.J. 264, 268, 277 A.2d 207, 209 (1971) (citation omitted); see also Provident Nat'l Bank v. California Fed. Sav. & Loan Ass'n, 819 F.2d 434, 436 (3d Cir.1987); American Tel. & Tel. Co. v. MCI Communications Corp., 736 F.Supp. 1294, 1301 (D.N.J.1990) (citations omitted) (hereinafter referred to as "AT & T").

The Due Process Clause of the Fourteenth Amendment

limits the reach of long-arm statutes so that a court may not assert personal jurisdiction over a nonresident defendant who does not have "certain minimum contacts with [the forum] such that the maintenance of the suit does not offend `traditional notions of fair play and substantial justice.'"

Provident Nat'l Bank, 819 F.2d at 436-37 (alteration in original) (quoting International Shoe Co. v. Washington, 326 U.S. 310, 320, 66 S.Ct. 154, 160, 90 L.Ed. 95 (1945)). The nature of the defendant's contacts with the forum state must be such that the defendant "should reasonably anticipate being haled into court there." World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297, 100 S.Ct. 559, 567, 62 L.Ed.2d 490 (1980) (citations omitted). "It is essential in each case that there be some act by which the defendant purposefully avails itself of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws." Hanson v. Denckla, 357 U.S. 235, 253, 78 S.Ct. 1228, 1239, 2 L.Ed.2d 1283 (1958) (citing International Shoe, 326 U.S. at 319, 66 S.Ct. at 159). The purposeful availment requirement thus ensures that a defendant will not be haled into court solely as a result of "random" "fortuitous" or "attenuated" contacts, or the unilateral activity of another person. AT & T, 736 F.Supp. at 1302 (citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475, 105 S.Ct. 2174, 2183, 85 L.Ed.2d 528 (19...