United States District Court, W.D. Kentucky, Bowling Green Division
FRUIT OF THE LOOM, INC. PLAINTIFF
EN GARDE, LLC DEFENDANT
MEMORANDUM OPINION AND ORDER
N. Stivers, Judge United States District Court.
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
STATEMENT OF FACTS AND CLAIMS
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).
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).
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.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.
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).
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.
Defendant's Motion to Dismiss
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
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).
Kentucky's Long-Arm Statute
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
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.
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,
although FOL's counsel may have purchased another t-shirt
from En Garde that did not bear the mark.
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