LOS ANGELES – The U.S. District Court for the Central District of California has denied Aero Advanced Paint Technology's motion to dismiss or transfer for lack of jurisdiction a case over allegations of trademark infringement.
U.S. District Judge Otis D. Wright made the ruling on Aug. 28. International Aero Products LLC (IAP) brought the lawsuit against Advanced Aero Paint Technology Inc. (AAPT), alleging trademark infringement.
“Specifically, the dispute concerns the right to use ‘AERO' and ‘AERO and Design’ as trademarks,” the order stated.
According to the court, the conflict started in 2016. The district court said Aero Advanced Paint Technology Inc. was advertising and promoting its products at the Specialty Equipment Market Association in Las Vegas. That’s when the defendant claimed that one of its customers was confused when he or she saw the plaintiff’s products and exhibit and believed plaintiff was related to defendant, the order stated.
IAP filed a suit against AAPT on April 11 over trademark infringement allegations and the defendant filed a suit against IAP on April 28 in the Southern District of Ohio on the same allegations.
The plaintiff filed a first amended complaint May 3, which was identical to the complaint, the district court said. However, instead of identifying International Aero Products as a California limited liability company, the plaintiff amended the complaint to assert that plaintiff is actually a Delaware limited liability company with its principal place of business in California, the order said.
“On June 8, 2018, in the Ohio Action, plaintiff IAP (and the related entities and individual) filed a motion to dismiss and transfer to transfer the case back to the Central District,” the order stated. “Subsequently, on June 28, 2018, defendant AAPT filed its motion to dismiss or transfer for lack of personal jurisdiction in this action.”
To determine specific jurisdiction in a suit involving trademark infringement, the court said it looks to whether a defendant “purposefully directs” its activities toward the forum.
The court added that personal jurisdiction doesn’t hinge on the sale of the accused products in the forum state, but a plaintiff only needs to show that the defendant “willfully infringed” and that the defendant knew that the plaintiff had its principal place of business in this district.
“Plaintiff alleges that defendant, through the use of its interactive website, defendant advertised, displayed and offered for sale products that were similar to plaintiff’s products to consumers in this district,” the order stated.
The court added that the plaintiff has shown that defendant’s conduct was expressly aimed at the forum state.
According to the court, the plaintiff has to also demonstrate that defendant’s conduct caused harm that it knew was likely to be suffered in the forum.
“This element is satisfied by showing that a defendant’s intentional act has foreseeable effects in the forum,” the order stated.
The court said the defendant’s cease and desist letter is addressed to plaintiff’s principal place of business in the forum state.
“Further, plaintiff argues that its sole place of business is within this district and that it manufactures all of its products in this district,” the order stated. “Therefore, it is foreseeable that plaintiff would suffer at least some harm by defendant’s alleged trademark infringement in this district.”