Case: 5:20-cv-01132-SL Doc #: 18 Filed: 03/16/21 1 of 23. PageID #: 233
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`J.M. SMUCKER COMPANY,
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`PLAINTIFF,
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`vs.
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`HORMEL FOOD CORPORATION,
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`CASE NO. 5:20-cv-1132
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`JUDGE SARA LIOI
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`MEMORANDUM OPINION
`AND ORDER
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
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` DEFENDANT.
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`This matter is before the Court on defendant Hormel Food Corporation’s (“Hormel” or
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`“defendant”) motion to dismiss (Doc. No. 13 [“Mot.”]) the complaint (Doc. No. 1 [“Compl.”]) of
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`plaintiff J.M. Smucker Company (“Smucker” or “plaintiff”). Smucker opposed the motion (Doc.
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`No. 14 [“Opp’n”]), to which Hormel replied (Doc. No. 15 [“Reply”]).
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`For the reasons that follow, Hormel’s motion is granted.
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`I.
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`Background
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`Smucker brings this action under the Lanham Act, 15 U.S.C. § 1052 et seq., and the Court
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`has jurisdiction over this matter under 28 U.S.C. §§ 1331, 1332, 1338(a), 2201–2202, and 1367.
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`(Compl. ¶ 8.) The following is a summary of the facts as alleged in Smucker’s complaint.
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`Smucker is an American food manufacturer, incorporated in Ohio, whose products include
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`JIF peanut butter. Smucker’s principal place of business is Orville, Ohio. (Compl. ¶¶ 2,11.) Hormel
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`is also a food manufacturer whose products include SKIPPY peanut butter. (See id. ¶¶ 35–37.)
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`Hormel is a Delaware corporation with its principal place of business in Minnesota, and a sales
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`office in Cincinnati, Ohio. (Id. ¶ 3.) In February 2020, Smucker announced plans to launch new
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`1
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`JIF products in June 2021, and released a graphic of Smucker’s FY21 product launch. (Id. ¶¶ 29–
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`30.) Smucker claims that it chose a light blue color (Pantone 2925C) for its JIF No Added Sugar
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`product to distinguish it from other JIF products, because consumers associate the color blue with
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`sugar content in food products, and because Smucker already utilizes a lid of that color for a JIF
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`product in Canada. (Id. ¶¶ 19–21.)
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`On March 17, 2020, Hormel’s in-house counsel emailed a letter to Smucker’s counsel
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`claiming to own “teal in the ray design on the labels” of SKIPPY peanut butter and expressing
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`concern over Smucker’s planned launch of JIF No Added Sugar with a blue lid. (Id. ¶ 31.) Smucker
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`responded that Hormel made no public claim to the use of teal in connection with its SKIPPY
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`peanut products, teal was just one of many colors Hormel used to distinguish different varieties of
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`SKIPPY products, and consumers were not likely to confuse Smucker’s new JIF product with a
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`blue lid with SKIPPY products. (Id. ¶ 34–40, 43–44.) After an exchange of letters between March
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`2020 and May 2020 (id. ¶¶ 31, 32, 50–53), Hormel warned Smucker that a nationwide launch of
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`JIF No Added Sugar with a blue lid would constitute willful infringement of Hormel’s teal colored
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`trade dress. (Id. ¶ 52.) The letters exchanged between Hormel and Smucker are attached to the
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`complaint.1
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`In April 2020, Hormel filed two trademark applications with the United States Patent and
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`Trademark Office (“USPTO”) claiming use of the color teal in product packaging for SKIPPY
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`peanut butter. (Id. ¶¶ 54–57.) Smucker claims that it will take years for these applications and
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`1 “[D]ocuments attached to the pleadings become part of the pleadings and may be considered on a motion to dismiss.”
`Commercial Money Ctr., Inc. v. Illinois Union Ins. Co., 508 F.3d 327, 335 (6th Cir. 2007) (citing Fed. R. Civ. P.
`10(c)). “In addition, when a document is referred to in the pleadings and is integral to the claims, it may be considered
`without converting a motion to dismiss into one for summary judgment.” Id. at 335–36 (citation omitted).
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`2
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`challenges thereto to work their way through the USPTO and, during that time, Smucker will be
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`left in a state of uncertainty regarding its legal liability in connection with JIF No Added Sugar
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`with a blue lid. (See id. ¶¶ 58–61.)
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`Smucker alleges that Hormel believed Smucker’s product launch would “eclipse”
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`Hormel’s own new SKIPPY peanut butter product announcement planned for June 2021. Smucker
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`contends that Hormel’s new trademark applications and cease and desist letters claiming trademark
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`infringement are designed to interfere with Smucker’s JIF No Added Sugar product launch. (Id.
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`¶¶ 42, 58–64.)
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`Based on these factual allegations, Smucker asserts four claims for relief. First, Smucker
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`seeks a declaration that Hormel has no enforceable trade dress rights in and to the color teal on
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`peanut butter products. (Id. ¶¶ 65–69.) Second, Smucker seeks a declaration that Smucker’s use of
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`Pantone 2925C for its JIF No Added Sugar product does not infringe any trade dress right owned
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`by Hormel in the color teal. (Id. ¶¶ 70–73.) Third, Hormel’s claims of trade dress infringement
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`constitute tortious interference with Smucker’s prospective economic advantage. (Id. ¶¶ 74–83.)
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`And fourth, Hormel’s trade dress infringement claims constitute common law unfair competition.
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`(Id. ¶¶ 84–92.)
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`In response, Hormel moves to dismiss the complaint pursuant to Fed. R. Civ. P. 12(b)(2),
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`12(b)(3), and 12(b)(6). (Mot. at 93.) Defendant maintains that the entire complaint should be
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`dismissed under Rule 12(b)(2) for lack of personal jurisdiction and, in addition, claims 3 and 4
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`should be dismissed under Rule 12(b)(6) for failure to state a claim. (Id. at 106.)
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`3
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`And to the extent the Court lacks personal jurisdiction over Hormel in Ohio, Hormel
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`maintains that the entire complaint should be dismissed for the additional reason of improper venue
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`under Rule 12(b)(3). (Id. at 120.)
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`The Court begins with the threshold issue of personal jurisdiction. See Friedman v. Estate
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`of Presser, 929 F.2d 1151, 1156 (6th Cir. 1991) (without personal jurisdiction over a defendant
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`the court lacks jurisdiction to proceed on the merits of the case even if the court has subject matter
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`jurisdiction).
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`II.
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`Discussion
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`A. Hormel’s Rule 12(b)(2) Motion
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`1. Standard of review
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`Federal Rule of Civil Procedure 12(b)(2) provides for dismissal of a defendant where the
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`Court lacks personal jurisdiction over the defendant. Smucker bears the burden making a prima
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`facie showing that this Court has personal jurisdiction over Hormel. Theunissen v. Matthews, 935
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`F.2d 1454, 1458 (6th Cir. 1991). In the face of a supported motion to dismiss, Smucker may not
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`rest upon its pleadings, but must, by affidavit or otherwise, set forth specific evidence supporting
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`personal jurisdiction of this Court over Hormel. Id.
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`To assert personal jurisdiction over a defendant, a federal court with subject matter
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`jurisdiction pursuant to either 28 U.S.C. § 1331 or § 1332 must find that (1) defendant is amenable
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`to service of process under the forum state’s long-arm statute, and (2) the exercise of personal
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`jurisdiction will not deny defendant due process. See Theunissen, 935 F.2d at 1459 (diversity);
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`Bird v. Parsons, 289 F.3d 865, 871 (6th Cir. 2002) (federal question); see also Chapman v.
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`Lawson, 89 F. Supp. 3d 959, 970 (S.D. Ohio 2015) (“Under Ohio law, personal jurisdiction over
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`4
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`non-resident defendants exists only if: (1) Ohio’s long-arm statute confers jurisdiction, and (2) the
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`requirements of the federal due process clause are met.”) (emphasis in original) (citations omitted).
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`Service under Ohio’s long-arm statute is governed by Ohio Rev. Code § 2307.382(A). The due
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`process inquiry requires determining “whether the facts of the case demonstrate that the non-
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`resident defendant possesses such minimum contacts with the forum state that the exercise of
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`jurisdiction would comport with ‘traditional notions of fair play and substantial justice.’”
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`Theunissen, 935 F.2d at 1459 (quoting Int’l Shoe Co. v. State of Wash., 326 U.S. 310, 316, 66 S.
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`Ct. 154, 90 L. Ed. 95 (1945)). Even if a defendant’s contact with the State of Ohio satisfies Ohio’s
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`long-arm statute, personal jurisdiction fails unless exercising jurisdiction over the defendant
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`comports with traditional notions of fair play and substantial justice.
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`Personal jurisdiction exists in two forms: “general” or “specific.” Conti v. Pneumatic
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`Prods. Corp., 977 F. 2d 978, 981 (6th Cir. 1992). General jurisdiction exists over a defendant when
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`his “contacts with the forum state are of such a ‘continuous and systematic’ nature that the state
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`may exercise personal jurisdiction over the defendant even if the action is unrelated to the
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`defendant’s contacts with the state.” Third Nat’l Bank in Nashville v. WEDGE Group Inc., 882
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`F.2d 1087, 1089 (6th Cir. 1989). Specific jurisdiction exists when a plaintiff’s claims arise out of
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`or relate to a defendant’s contacts with the forum state, that is, there is a nexus between a
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`defendant’s contacts in the forum state and plaintiff’s claim. Kerry Steel, Inc. v. Paragon Indus.,
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`Inc., 106 F.3d 147, 149 (6th Cir. 1997); Conti, 977 F.2d at 981.
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`In deciding Hormel’s Rule 12(b)(2) motion the Court may, at its discretion, (1) decide the
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`motion on affidavits alone, (2) permit discovery in aid of deciding the motion, or (3) conduct an
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`evidentiary hearing to resolve any apparent factual questions. Theunissen, 935 F.2d at 1458;
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`5
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`Burnshire Dev., LLC v. Cliffs Reduced Iron Corp., 198 F. App’x 425, 434 (6th Cir. 2006). Both
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`sides submitted declarations in support of their respective positions regarding the Court’s personal
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`jurisdiction over Hormel.2 With one exception, neither party has requested discovery3 or a hearing
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`with respect to Hormel’s motion.
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`In this case, the parties dispute over personal jurisdiction centers more on the legal
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`significance of Hormel’s contacts with Ohio rather than a factual dispute as to the nature of those
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`contacts.4 Having reviewed the briefs and declarations attached thereto, the Court concludes that
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`Hormel’s Rule 12(b)(2) motion may be resolved on the parties’ submissions and a hearing will not
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`assist the Court. When the Court elects to decide the motion upon the written submissions, it must
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`view the declarations, pleadings and related documentary evidence in the light most favorable to
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`the plaintiff. Bird, 289 F.3d at 871. That said, the Court is not precluded from considering
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`undisputed factual representations of the defendant that are consistent with the representations of
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`the plaintiff. Kerry Steel, 106 F.3d at 153. Where a district court decides the issue solely on the
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`basis of written materials and affidavits, “the burden on the plaintiff is relatively slight, . . . and
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`the plaintiff must make only a prima facie showing that personal jurisdiction exists in order to
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`2 In support of its motion, Hormel submits the declarations of Craig S. Drefcinski, Hormel’s Director of Sales-Kroger
`in Cincinnati, Ohio (Doc. No. 13-2 [“Drefcinski Decl.”] ¶ 2); Lora M. Friedemann, counsel for Hormel (Doc. No. 13-
`2 [“Friedemann Decl.”] ¶ 1); Steven J. Venenga, Hormel’s Vice President of Grocery Products Marketing (Doc. No.
`13-4 [“Venenga Decl.”] ¶ 2). In opposition, Smucker submits the declarations of Tina Floyd, Smucker’s Senior Vice
`President and General Manager, Consumer Foods (Doc. No. 14-1 [“Floyd” Decl.”] ¶ 1) and Christina J. Moser, counsel
`for Smucker (Doc. No. 14-2 [“Moser Decl.”] ¶1).
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`3 Smucker requests that “[i]f the Court were to rely on the generic, unexplained sales data provided by Hormel, then
`Smucker requests that it be allowed discovery directed to the full extent and significance of Hormel’s business
`activities in the state.” (Opp’n at 168 n.5 (underlining in original) (Page number references are to the page
`identification numbers generated by the Court’s electronic filing system).)
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`4 The parties do not disagree that Hormel has two distribution centers in Ohio, one of which has two Hormel employees
`on site. Nor do the parties disagree that Hormel has a sales office in Cincinnati with 35-40 employees whose primary
`function is to facilitate Hormel’s business with Kroger, including Hormel’s SKIPPY products.
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`defeat dismissal[.]” Air Prods. & Controls, Inc. v. Safetech Int’l, Inc., 503 F.3d 544, 549 (6th Cir.
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`2007) (internal quotation marks and citations omitted). A plaintiff can meet this burden by
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`“establishing with reasonable particularity sufficient contacts between [the defendant] and the
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`forum state to support jurisdiction.” Neogen Corp. v. Neo Gen Screening, Inc., 282 F.3d 883, 887
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`(6th Cir. 2002) (internal quotation marks and citation omitted). “Dismissal [is] only proper if all
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`of the specific facts [plaintiff] alleged collectively fail[] to state a prima facie case for jurisdiction
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`under the appropriate standards.” Theunissen, 935 F.2d at 1459; see also Kerry Steel, 106 F.3d at
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`149.
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`2. Analysis
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`Defendant argues that the entire case should be dismissed pursuant to Rule 12(b)(2)
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`because this Court lacks both general and specific personal jurisdiction over Hormel. (Mot. at 107–
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`15.) Smucker argues that this Court has specific personal jurisdiction over Hormel based upon the
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`three cease and desist letters Hormel sent Smucker claiming that Smucker’s use of Pantone 2925C
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`on its new peanut butter product infringes Hormel’s SKIPPY teal colored trade dress.5 (Opp’n at
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`161–70.)
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`The Sixth Circuit has established a three-part test for determining whether the due process
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`component of personal jurisdiction is satisfied in the context of specific jurisdiction. First, the
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`defendant must purposefully avail itself of the privilege of acting in the forum state or causing a
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`consequence in the forum state. Second, the cause of action must arise from defendant’s activities
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`there. Finally, defendant’s activities or the consequences thereof must have a substantial enough
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`5 In opposing Hormel’s Rule 12(b)(2) motion, Smucker does not address or argue the issue of general jurisdiction.
`Having waived that issue, the Court will limit its analysis to the parties’ arguments concerning specific jurisdiction.
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`7
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`connection with the forum state to make the exercise of jurisdiction over the defendant reasonable.6
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`S. Machine Co. v. Mohasco Indus., Inc., 401 F.2d 374, 381 (6th Cir. 1968). Unlike general
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`jurisdiction, specific jurisdiction exists only when the cause of action “arise[s] out of or [is] related
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`to the defendant’s contacts with the forum[.]” Helicopteros Nacionales de Colombia, S.A. v. Hall,
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`466 U.S. 408, 414 n.8, 104 S. Ct. 1868, 80 L. Ed. 2d 404 (1984). Smucker must establish specific
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`personal jurisdiction over Hormel for each cause of action. See J.M. Smucker Co. v. Promotion in
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`Motion, Inc., 420 F. Supp. 3d 646, 655–56 (N.D. Ohio 2019) (citing SunCoke Energy, Inc. v. MAN
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`Ferrostaal Aktiengesellschaft, 563 F.3d 211, 219 (6th Cir. 2009)).
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`Claims 1 and 2 for declaratory judgment
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`In claims 1 and 2, Smucker seeks a declaration that Hormel has no enforceable trade dress
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`rights in the color teal (claim 1) and that Smucker’s use of Pantone 2925C on its JIF No Added
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`Sugar product does not infringe any trade dress rights owned by Hormel in the color teal (claim
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`2). (Compl. ¶¶ 65–73.)
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`Hormel argues that its cease and desist letters are insufficient to support specific
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`jurisdiction in Ohio, citing among authorities a recent case from the Northern District of Ohio
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`similar to the instant action—J.M. Smucker Co., 420 F. Supp. 3d 646 (N.D. Ohio 2019).7 In that
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`6 The Federal Circuit uses a virtually identical three-part test to analyze the constitutional limits on specific
`jurisdiction. See HealthSpot, Inc. v. Computerized Screening, Inc., 66 F. Supp. 3d 962, 969 (N.D. Ohio 2014) (“The
`Federal Circuit uses a three part test to analyze constitutional limits on specific personal jurisdiction. First, the
`defendant must have purposefully directed its activities at residents of the forum. Second, the plaintiff’s claims must
`arise from or relate to those activities. And third, the assertion of personal jurisdiction must be reasonable and fair
`under the circumstances.”) (citing AFTG–TG, LLC v. Nuvoton Tech. Corp., 689 F.3d 1358, 1361 (Fed. Cir. 2012)
`(citation omitted)).
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`7 In J.M. Smucker Co., defendant Promotion in Motion, Inc. (“PIM”), a Delaware corporation with its principal
`place of business in New Jersey, sent a cease and desist letter to Smucker stating that Smucker’s use of “Fruit is our
`1st Ingredient” on its Natural Fruit Spread product violates the Lanham Act with respect to PIM’s use of the tagline
`“Fruit is our 1st Ingredient” on its Welch’s Fruit Snack product. J.M. Smucker Co., 420 F. Supp. 3d at 650–52.
`Smucker sued seeking a declaration that use of the phrase “Fruit is our 1st Ingredient” did not infringe on PIM’s
`rights and claims for trademark infringement and unfair competition. (Id. at 650.)
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`case, the court found that cease and desist letters sent by defendant to Smucker in Ohio regarding
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`Smucker’s alleged infringement of defendant’s trademark, in the absence of other trademark
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`enforcement activity by defendant in the State of Ohio, was insufficient to support specific
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`personal jurisdiction with respect to J.M. Smucker’s declaratory judgment claim. See J.M. Smucker
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`Co., 420 F. Supp. 3d at 658.
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`Unlike general jurisdiction, specific jurisdiction requires that plaintiff’s cause of action
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`arise from defendant’s contacts with the forum state. Mohasco Indus., 401 F.2d at 381 (the cause
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`of action must arise from defendant’s activities in the state). Smucker’s declaratory judgment
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`claims seek to “clear the air of infringement charges” resulting from Hormel’s enforcement of its
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`alleged intellectual property rights, and Smucker’s injury with respect to those claims is the threat
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`communicated by Hormel’s cease and desist letters. See J.M. Smucker Co., 420 F. Supp. 3d at
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`656–57 (quoting Avocent Huntsville Corp. v. Aten Int’l Co., Ltd., 552 F.3d at 1332–33).8 Thus,
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`declaratory judgment claims do not arise from infringement or unfair competition activities, but
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`from the activity of the defendant enforcing its alleged intellectual property rights. Avocent
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`Huntsville Corp., 552 F.3d at 1333. Therefore, the relevant inquiry for specific personal
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`jurisdiction with respect to a declaratory judgment claim is “‘to what extent has the defendant [ ]
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`purposefully directed . . . enforcement activities at residents of the forum, and the extent to which
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`the declaratory judgment claim arises out of or relates to those activities.’” J.M. Smucker Co., 420
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`F. Supp. 3d at 658 (quoting Avocent Huntsville Corp., 552 F.3d at 1332-1333) (emphasis added).
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`8 Although Avocent Huntsville Corp. addressed a request for declaratory relief concerning non-infringement and
`invalidity of patents, numerous courts have held that the reasoning in that case applies equally to suits seeking a
`declaration of non-infringement of other intellectual property rights, such as copyrights and trademarks. See J.M.
`Smucker Co., 420 F. Supp. 3d at 657 (collecting cases).
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`The mere sending of cease and desist letters is insufficient to give rise to personal
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`jurisdiction. HealthSpot, Inc. v. Computerized Screening, Inc., 66 F. Supp. 3d 962, 969 (N.D. Ohio
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`2014) (citing Red Wing Shoe Co. v. Hockerson–Halberstadt, Inc., 148 F.3d 1355, 1360–61 (Fed.
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`Cir. 1998)). This is so because even though cease-and-desist letters alone are substantially related
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`to declaratory judgment claims, such minimum contacts are not sufficient to satisfy the concepts
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`of fair play and substantial justice necessary to render the exercise of personal jurisdiction over a
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`non-resident defendant reasonable. The owner of intellectual property rights “should not subject
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`itself to personal jurisdiction in a forum solely by informing a party who happens to be located
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`there of suspected infringement. Grounding personal jurisdiction on such contacts alone would not
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`comport with principles of fairness.” Red Wing Shoe, 148 F.3d at 1360–61 (citing Asahi Metal
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`Indus. Co. v. Superior Ct. of Cal., 480 U.S. 102, 121–22, 107 S. Ct. 1026, 94 L. Ed. 2d 92 (1987)
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`(Stevens, J., concurring in judgment)).
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`But actions that go beyond merely sending cease and desist letters may support specific
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`personal jurisdiction, such as judicial or extra-judicial enforcement activities within the forum,
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`entering into an exclusive license agreement, or another undertaking imposing enforcement
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`obligations on a party residing or regularly doing business in the forum. J.M. Smucker Co., 420 F.
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`Supp. 3d at 657 (citing Avocent Huntsville Corp., 552 F.3d at 1334); see also HealthSpot, Inc., 66
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`F. Supp. 3d at 970 (other extra-judicial enforcement activities in the forum state which may give
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`rise to specific personal jurisdiction over declaratory judgment claim include hiring a forum-state
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`attorney to contact the declaratory judgment plaintiff, defendant representatives attending a
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`demonstration in the forum state of the allegedly infringing product, and asking a convention
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`manager in the forum state to close plaintiff’s booth on infringement grounds, all of which go
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`beyond simply informing plaintiff of defendant’s allegations of infringement) (citations omitted).
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`Indeed, Smucker concedes that “courts frequently concluded that it is not reasonable to
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`exercise jurisdiction over a defendant who sent a good faith cease and desist letter seeking to
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`enforce intellectual property rights that otherwise have no connection to the state.” (Opp’n at 164-
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`65.) But plaintiff distinguishes the instant action from the J.M. Smucker Co. case in two ways.
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`First, plaintiff argues that, unlike J.M. Smucker Co., Hormel’s cease and desist letters were sent in
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`bad faith and the safe-harbor provision of Red Wing Shoe applies only to good faith enforcement
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`efforts. (Id. at 166 n.2, 167.) In support, Smucker points to HealthSpot, Inc. (Id. at 167.) In
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`HealthSpot, Inc. the court found that defendant’s activities beyond the cease and desist letters
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`“expressed an intent to interfere with Plaintiff HealthSpot’s attempts to raise capital as a startup.
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`Moreover, by repeatedly threatening to sue on particular dates and then not following through, CSI
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`subjected HealthSpot to precisely the sort of infringement charges that might ‘restrain the
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`exploitation of non-infringing goods’ and that declaratory judgments are designed to ‘clear the air’
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`of.” HealthSpot, Inc., 66 F. Supp. 3d at 971. But Smucker does not identify any extra-judicial
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`activity by Hormel—beyond the cease and desist letters—to indicate Hormel was asserting
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`objectively baseless9 sham allegations of trade dress infringement and acting in bad faith.
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`Second, plaintiff argues that the court in J.M. Smucker Co. relied on a non-existent rule
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`that cease and desist letters can never provide a basis for personal jurisdiction in a declaratory
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`judgment action and other factors must be considered. (Opp’n at 165 and n.2. (citing Jack Henry
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`9 In analyzing defendant’s motion to dismiss Smucker’s state law claim, infra, the Court finds that Hormel’s trade
`dress infringement allegations are not objectively baseless.
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`& Assoc., Inc. v. Plano Encryption Tech., Inc., 910 F.3d 1199, 1206 (Fed. Cir. 2018).) But the
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`court in J.M. Smucker Co. did consider the presence of other activities by the defendant in Ohio
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`relating to enforcement of defendant’s intellectual property rights and found none. J.M. Smucker
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`Co., 420 F. Supp. 3d at 658 (“There is no evidence of any kind of licensing or other agreement
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`between PIM and Smucker relating to the alleged trademark at issue, nor is there evidence that
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`PIM engaged in ‘other activities’ relating to the enforcement of its alleged trademark in Ohio, such
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`as the initiation of judicial or extra-judicial enforcement actions within this forum. Courts have
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`routinely found that the sending of cease and desist letters, standing alone, is insufficient to confer
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`jurisdiction over a declaratory judgment claim. Accordingly, the Court finds that Smucker has
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`failed to demonstrate that personal jurisdiction exists over PIM with respect to its Declaratory
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`Judgment claim because Smucker has failed to demonstrate purposeful availment under the first
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`prong of Mohasco.”) (citing among authority HealthSpot, Inc., 66 F. Supp. 3d at 970)).
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`To the extent that Smucker is arguing that Hormel’s physical presence in Ohio constitutes
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`“other factors” that support a finding of specific personal jurisdiction based upon Hormel’s cease
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`and desist letters, that argument is unavailing. Smucker makes much of Hormel’s physical
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`presence in the State of Ohio, but neither Smucker nor Hormel contend that these contacts are
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`related to Smucker or to Hormel’s enforcement of its alleged trademark/trade dress rights against
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`Smucker. Nor does Smucker dispute the affidavits advanced by Hormel to the contrary.10 Hormel’s
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`10 See Drefcinski Decl. ¶ 3 (Hormel’s thirty-five employee Cincinnati office to facilitate business with Kroger “is not
`involved in or responsible for strategic business decisions, marketing or advertising, brand management, or intellectual
`property enforcement related to SKIPPY products.”); id. ¶ 8 (“Neither myself, nor anyone else in the Cincinnati sales
`office had any involvement in the cease and desist letters sent to Smucker in connection with this lawsuit. Neither
`myself, nor anyone else in the Cincinnati sales office has contacted any Ohio person or business regarding the JIF No
`Added Sugar or Skippy trade dress.”); see also Venenga Decl. ¶¶ 4, 6 (Hormel’s principal place of business and
`corporate headquarters are located in Austin, Minnesota, and all “primary business activities and decision-making
`regarding Hormel’s brands and brand management, trademark rights, trade dress rights, intellectual property
`protection and enforcement, product development, and product launches occur in Austin, Minnesota.”); id. ¶¶ 9–11
`12
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`Case: 5:20-cv-01132-SL Doc #: 18 Filed: 03/16/21 13 of 23. PageID #: 245
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`two distribution centers in Ohio and sales activity in the Cincinnati office are not enforcement
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`activities relevant to the inquiry of personal jurisdiction in the context of a declaratory judgment
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`claim. See J.M. Smucker Co., 420 F. Supp. 3d at 658 (sales and promotional activities are not
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`relevant to the inquiry of to what extent defendant has directed enforcement activities to residents
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`of the forum state and to what extent the declaratory judgment claims relate to those activities)
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`(citing Avocent Huntsville Corp., 552 F.3d at 1332–33); see also HealthSpot, 66 F.Supp.3d at 969
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`(“[N]either sales nor non-exclusive licenses can give rise to specific personal jurisdiction for
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`declaratory judgment suits because they relate to the patent’s commercialization rather than to its
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`enforcement.”) (citing Avocent Huntsville Corp., 552 F.3d at 1335–36). Nor has Smucker
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`identified or alleged any facts regarding Hormel’s trademark/trade dress enforcement activities in
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`Ohio—judicial, extra-judicial, or otherwise—beyond the cease and desist letters at issue here. The
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`two affidavits submitted by Smucker in opposition to Hormel’s motion are devoid of any
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`averments concerning enforcement activity by Hormel in Ohio that, construed in a light most
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`favorable to Smucker, provide even the slightest evidence that Hormel engaged in an any trade
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`dress enforcement or enforcement-related activity in Ohio beyond the cease and desist letters
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`attached to Smucker’s complaint.11
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`(All decisions regarding SKIPPY are made in Austin, Minnesota, including intellectual property protection and
`enforcement. Hormel does not engage any Ohio marketing or advertising agencies and has never licensed SKIPPY
`trademark or trade dress.); id. ¶¶ 16–22 (The decision to send cease and desist letters to Smucker regarding SKIPPY
`trade dress was made by Hormel in Minnesota and a Hormel lawyer in Minnesota prepared the letter which was
`approved by Hormel employees in Minnesota and sent to Smucker on March 17, 2020. Hormel’s outside counsel
`based in Minneapolis, with the approval of Hormel in Minnesota, sent Smucker a second letter on April 9, 2020. On
`May 19, 2020, a third letter was sent to Smucker regarding this dispute by Hormel’s Minneapolis-based attorneys.
`Except for these letters, Hormel has not communicated to any Ohio-based person or business about Smucker’s JIF No
`Added Sugar product, nor instituted any proceedings in Ohio concerning Smucker’s product or the SKIPPY trade
`dress.).
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`11 The first affidavit is that of Tina Floyd, Smucker’s Senior Vice President and General Manager, Consumer Foods.
`(Floyd Decl. ¶ 1.) Floyd makes various averments regarding the parties’ respective positions in the peanut butter
`market and that Hormel sells SKIPPY peanut butter in Kroger stores in Ohio. (Id. ¶¶ 2, 3.) Floyd avers that “[i]f
`13
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`In the absence of any other judicial or extra-judicial activity by Hormel in Ohio related to
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`the trade dress enforcement at issue here, Hormel’s cease and desist letters to Smucker are
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`insufficient to establish personal jurisdiction over Hormel as to Smucker’s declaratory judgment
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`claims. See J.M. Smucker Co., 420 F. Supp. 3d at 657 (the exercise of personal jurisdiction must
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`rest upon other activities directed at the forum and relating to enforcement besides the letters
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`threatening an infringement suit ) (citing Avocent Huntsville Corp., 552 F.3d at 1333–34); see also
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`Power Sys., Inc. v. Hygienic Corp., No. 3:13-cv-382, 2014 WL 2865811, at *6–8 (granting motion
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`to dismiss for lack of personal jurisdiction where, even if Hygenic’s sales activities in Tennessee
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`may serve as evidence of purposeful availment, defendant’s only relevant contact with Tennessee
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`concerning enforcement activities were those directed at plaintiff and, in the absence of other
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`judicial or extrajudicial enforcement activities directed by defendant at the forum state, finding
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`personal jurisdiction on a cease and desist letter alone is inconsistent with the principles of fairness
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`underlying personal jurisdiction); Indus Trade & Tech., LLC v. Stone Mart Corp., No. 2:11-cv-
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`637, 2011 WL 6256937, at *4–7 (S.D. Ohio Dec. 14, 2011) (cease and desist letters satisfy neither
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`the purposeful availment nor arising under prongs of Mohasco Indus.) (collecting cases); Ann
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`Arbor T-Shirt Co., LLC v. Lifeguard Licensing Corp., No. 15-CV-13647, 2016 WL 1323784, at
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`Hormel actively monitors the peanut butter market, as it claims to do, I would be extremely surprised if it was not
`aware of ConAgra’s use of a light blue jar and lid for PETER PAN whipped creamy peanut butter at or near the time
`the packaging debuted.” (Id. ¶ 3.) Floyd also avers that Hormel announced its SKIPPY no added sugar and squeeze
`pack product in June 2020, which were the same product innovations announced by Smucker in February 2020. (Id.
`¶ 5.) With respect to the declaration submitted by Smucker’s counsel, Christina Moser, she avers that, attached to her
`declaration is a true and correct copy of: (1) an article regarding Skippy’s new product line on foodbusinessnews.com
`dated June 3, 2020 (Moser Decl. ¶ 2); (2) an article from The Takeout titled “It’s Skippy vs. Jif in the Battle of the
`Squeezable Peanut Butter Pouches” (id. ¶ 3); (3) a June 16, 2020 Office Action issued by the USPTO regarding
`application Serial No. 88/895,128 requiring Hormel to provide evidence that the color teal has acquired source-
`identifying significance in the mind of the consumer (id. ¶ 4; Doc. No.