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Fruit of The Loom, Inc. v. EN Garde, LLC

United States District Court, W.D. Kentucky, Bowling Green Division

August 25, 2017

FRUIT OF THE LOOM, INC. PLAINTIFF
v.
EN GARDE, LLC DEFENDANT

          MEMORANDUM OPINION AND ORDER

          Greg N. Stivers, Judge United States District Court.

         This matter is before the Court on Defendant's Motion to Dismiss (DN 15), Plaintiff's Motion for Preliminary Injunction (DN 4), and Plaintiff's Motion for Leave to File a Sur-Reply (DN 25). For the reasons outlined below, Defendant's Motion to Dismiss is GRANTED, Plaintiff's Motion for Preliminary Injunction is DENIED AS MOOT, and Plaintiff's Motion for Leave to File a Sur-Reply is DENIED.

         I. STATEMENT OF FACTS AND CLAIMS

         Plaintiff Fruit of the Loom, Inc. (“FOL”) is a global garment manufacturer which owns various trademarks registered with the U.S. Patent & Trademark Office (“USPTO”). (Compl. ¶¶ 7-9, 12-13, DN 1). Its marks include the word marks FRUIT and FRUIT OF THE LOOM, and other related marks with design elements that are used in connection with, inter alia, “clothing or textile goods, including T-shirts, underwear, active wear, and socks . . . .” (Compl. ¶¶ 12-13).

         On July 8, 2015, Defendant En Garde, LLC (“En Garde”) filed an intent-to-use trademark application with the USPTO for the word mark FRUIT OF THE TOMB to be used with “clothing, namely, t-shirts, pants, hats, socks, swim suits, and shorts . . . .” (Compl. ¶ 21 (internal quotation marks omitted)). FOL has filed an opposition with the USPTO Trademark & Appeal Board, which is still pending. (Compl. ¶ 23).

         FOL has alleged that En Garde or someone acting on its behalf has registered the domain name fruit-of-the-tomb.com. (Compl. ¶ 25). En Garde has also purportedly begun selling apparel in its locality of Houston, Texas, and has established an online store through Shopify. (Compl. ¶ 26). According to FOL, “En Garde currently operates an online store selling apparel and handbags at http://fruit-of-the-tomb.co and http://fruit-of-the-tomb.myshopify.com, ” in which Defendant uses its FRUIT OF THE TOMB mark. (Compl. ¶ 28). En Garde is allegedly marketing and selling its wares on social media platforms such as Facebook and Twitter. (Compl. ¶ 29).

         FOL filed this lawsuit alleging trademark infringement in violation of 15 U.S.C. § 1114, trademark dilution in violation of 15 U.S.C. § 1125(c), and federal unfair competition in violation of 15 U.S.C. § 1125(a). (Compl. ¶¶ 39-54). After FOL moved for a preliminary injunction, En Garde moved to dismiss this lawsuit due to lack of personal jurisdiction. (Pl.'s Mot. Prelim. Inj., DN 4; Def.'s Mot. Dismiss, DN 15).

         II. JURISDICTION

         This Court has subject-matter jurisdiction of this matter based upon federal question jurisdiction and because of federal courts' exclusive jurisdiction over trademark law. See 28 U.S.C. §§ 1331, 1338.

         III. DISCUSSION

         A. Defendant's Motion to Dismiss

         En Garde has moved to dismiss FOL's claims because this Court lacks personal jurisdiction over En Garde. (Def.'s Mot. Dismiss 2-11, DN 15). A plaintiff bears the burden of proving that a court has personal jurisdiction over a defendant. See Air Prods. & Controls, Inc. v. Safetech Int'l, Inc., 503 F.3d 544, 549 (6th Cir. 2007). To survive a motion to dismiss, a plaintiff must present a prima facie case of personal jurisdiction over the moving party. See Nationwide Mut. Ins. Co. v. Tryg Int'l Ins. Co., 91 F.3d 790, 792 (6th Cir. 1996). In ruling on a motion under Fed.R.Civ.P. 12(b)(2) the Court may resolve the motion without an evidentiary hearing, but it must construe the pleadings, affidavits, and other evidence in the light most favorable to the plaintiff. See Bird v. Parsons, 289 F.3d 865, 871 (6th Cir. 2002). A court should not weigh “the controverting assertions of the party seeking dismissal.” Theunissen v. Matthews, 935 F.2d 1454, 1459 (6th Cir. 1991) (citations omitted).

         A federal court has personal jurisdiction over a defendant if: “(1) the defendant is amenable to service of process pursuant to the forum state's long-arm statute and (2) the exercise of personal jurisdiction would not deny due process under federal Constitution.” Coleman v. Mary Jane M. Elliott, P.C., No. 3:14-CV-00640-CRS, 2015 WL 3407320, at *2 (W.D. Ky. May 21, 2015) (citing Bird, 289 F.3d at 871). At this stage of the litigation and because the Court is addressing this issue based upon written submissions only, FOL “need only make a prima facie showing of jurisdiction” to defeat En Garde's motion to dismiss. Compuserve, Inc. v. Patterson, 89 F.3d 1257, 1262 (6th Cir. 1996) (citing Theunissen, 935 F.2d at 1458-59).

         1. Kentucky's Long-Arm Statute

         En Garde asserts that it is not subject to service of process under Kentucky's long-arm statute, KRS 454.210. (Def.'s Mot. Dismiss 5-6). To obtain service of process on En Garde, KRS 454.210 must authorize personal jurisdiction over it. See KRS 454.210(3)(a)(“When personal jurisdiction is authorized by this section, service of process may be made on such person, or any agent of such person, in any county in this Commonwealth, where he may be found, or on the Secretary of State who, for this purpose, shall be deemed to be the statutory agent of such person.”).

         In Caesars Riverboat Casino, LLC v. Beach, 336 S.W.3d 51 (Ky. 2011), the Kentucky Supreme Court clarified the scope of KRS 454.210, which had been construed broadly by Kentucky courts. In Beach, the court explained the proper analysis of the long-arm statute is as follows:

First, review must proceed under KRS 454.210 to determine if the cause of action arises from conduct or activity of the defendant that fits into one of the statute's enumerated categories. If not, then in personam jurisdiction may not be exercised. When that initial step results in a determination that the statute is applicable, a second step of analysis must be taken to determine if exercising personal jurisdiction over the non-resident defendant offends his federal due process rights.

Id. at 57.

         In its response to this motion, FOL avers that En Garde's conduct subjects it to personal jurisdiction under KRS 454.210(2)(a)(2). (Pl.'s Resp. Def.'s Mot. Dismiss 8, DN 9). In relevant part, the long-arm statute provides that “[a] court may exercise personal jurisdiction over a person who acts directly or by an agent, as to a claim arising from the person's . . . [c]ontracting to supply services or goods in this Commonwealth . . . .” KRS 454.210(2)(a)(2). With regard to En Garde's activities within Kentucky, FOL has asserted that En Garde has sold only one garment bearing the offending mark in Kentucky, [1] although FOL's counsel may have purchased another t-shirt from En Garde that did not bear the mark.

         It is apparent that En Garde's sale of goods to only one buyer in Kentucky is sufficient to satisfy KRS 454.210(2)(a)(2). As the Kentucky Supreme Court has commented, “[a] plain reading of the statutory language produces the interpretation that the contract need not be made or executed ‘in this Commonwealth, ' but, rather, only that the contract provide for the supplying of services or goods to be transported into, consumed or used in Kentucky.” Hinners v. Robey, 336 S.W.3d 891, 896 (Ky. 2011). The buyer's use of En Garde's page on the myshopify.com web platform was the means through which En Garde offered to sell its wares at the stated prices. When ...


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