Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA914064
`08/07/2018
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91241903
`
`Defendant
`IPack Sarl
`
`I. Edward Marquette
`Kutak Rock LLP
`2300 Main StreetSuite 800
`Kansas City, MO 64108
`UNITED STATES
`Email: ed.marquette@kutakrock.com, ttab.gillette@kutakrock.com,
`meredith.webster@kutakrock.com
`Opposition/Response to Motion
`
`I. Edward Marquette
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`ttab.gillette@kutakrock.com, andrea.black@kutakrock.com
`
`/I. Edward Marquette/
`
`08/07/2018
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`Exhibit_1_Motion to Dismiss.pdf(2782849 bytes )
`Exhibit_2_Motion to Stay.pdf(709594 bytes )
`Exhibit_3A.pdf(4897139 bytes )
`Exhibit_3B.pdf(550193 bytes )
`Exhibit_3C.pdf(341652 bytes )
`IPacks Opposition to Tailgates Motion to Suspend.pdf(194503 bytes )
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`

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`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF TENNESSEE
`NASHVILLE DIVISION
`
`Case No.: 3:18-cv-00563
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`Chief Judge Waverly D. Crenshaw, Jr.
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`Magistrate Judge Jeffery S. Frensley
`
`) )
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`TAILGATE BEER, LLC
`
`Plaintiff,
`
`v.
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`BOULEVARD BREWING COMPANY,
`DUVEL MOORTGAT USA, LTD.,
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`Defendants.
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`DEFENDANTS’ MOTION TO DISMISS
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`Defendants Boulevard Brewing Company (“Boulevard”) and Duvel Moortgat USA, Ltd.
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`(“DUSA”) (collectively, “Defendants”), by and through their counsel of record, and pursuant to
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`Rule 12(b)(2) and (3) of the Federal Rules of Civil Procedure and L.R. 7.01, move for an Order
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`dismissing Plaintiff Tailgate Beer, LLC’s (“Tailgate”) Complaint for lack of personal jurisdiction
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`and improper venue, or in the alternative, transferring the case to the District of Delaware. Tailgate
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`cannot establish general or specific jurisdiction over Boulevard or DUSA. Defendants file a
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`Memorandum in Support of this Motion to Dismiss simultaneously herewith.
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`1
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`

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`Dated: July 13, 2018
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`Respectfully submitted,
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`KUTAK ROCK LLP
`
`By /s/ Gregory R. Crochet
`Gregory R. Crochet (TN Bar #26962)
`303 Peachtree Street NE, Suite 2750
`Atlanta, Georgia 30308-3218
`(404) 222- 4600(Telephone)
`(404) 222- 4654 (Facsimile)
`Greg.Crochet@kutakrock.com
`
`ATTORNEY FOR DEFENDANTS
`BOULEVARD BREWING COMPANY AND
`DUVEL MOORTGAT USA, LTD.
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`2
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 13, 2018, Defendants’ Motion to Dismiss was filed using the
`Court’s CM/ECF e-filing system, which will send notification of such filing to the following
`counsel of record:
`
`Richard S. Busch
`Joshua D. Wilson
`King & Ballow
`315 Union Street
`Suite 1100
`Nashville, TN 37201
`(615) 259−3456
`Email: rbusch@kingballow.com
`Email: jwilson@kingballow.com
`ATTORNEYS FOR PLAINTIFF
`
`/s/ Gregory R. Crochet
`Gregory R. Crochet
`
`3
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`

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`IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF TENNESSEE
`NASHVILLE DIVISION
`
`Case No.: 3:18-cv-00563
`
`Chief Judge Waverly D. Crenshaw, Jr.
`
`Magistrate Judge Jeffery S. Frensley
`
`) )
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`) )
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`) )
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`)
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`) )
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`)
`
`TAILGATE BEER, LLC
`
`Plaintiff,
`
`v.
`
`BOULEVARD BREWING COMPANY,
`DUVEL MOORTGAT USA, LTD.,
`
`Defendants.
`
`DEFENDANTS’ MEMORANDUM IN SUPPORT OF MOTION TO DISMISS FOR
`LACK OF PERSONAL JURISDICTION AND IMPROPER VENUE
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`Defendants Boulevard Brewing Company (“Boulevard”) and Duvel Moortgat USA, Ltd.
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`(“DUSA”) (collectively, “Defendants”) state the following in support of Defendants’ Motion to
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`Dismiss Plaintiff Tailgate Beer, LLC’s (“Tailgate”) Complaint for lack of personal jurisdiction
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`and improper venue, pursuant to Fed. R. Civ. P. 12(b)(2) and (3) (the “Motion”)1:
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`INTRODUCTION
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`This is a trademark and copyright infringement lawsuit in which Tailgate alleges that
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`Defendants infringed Tailgate’s registered word and design marks, despite the United States Patent
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`1 Defendants reserve their rights under Fed. R. Civ. P. 12(h)(2) to raise additional defenses,
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`including, but not limited to, failure to state a claim and failure to join a party under Rule 19.
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`1
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`and Trademark Office (“USPTO”) having already preliminarily determined that there is no
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`likelihood of confusion between the allegedly infringing pickup truck applied-for-mark and
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`Tailgate’s registered marks. Defendants deny Tailgate’s claims, and initiated a cancellation
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`petition on March 2, 2018, for Tailgate’s registered pickup truck mark at the Trademark Trial and
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`Appeal Board (“TTAB”).
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`Pursuant to their limited entry of appearance, Defendants ask this Court to first address
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`whether this Court has jurisdiction to evaluate the substance of the parties’ claims and defenses.
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`For the reasons set forth below, Defendants seek dismissal of this lawsuit or, in the alternative,
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`transfer to another district court on the basis that there is no personal jurisdiction over Defendants
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`in the Middle District of Tennessee.
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`BRIEF STATEMENT OF THE LEGAL AND FACTUAL ISSUES
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`Pursuant to L.R. 7.01(a), this Motion raises the legal issues of whether either of the
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`Defendants are subject to personal jurisdiction in this forum and, if not, what is the proper venue
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`for this case. Defendants contend that this Court does not have general personal jurisdiction
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`because the Defendants are not essentially at home in Tennessee in that they are incorporated and
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`have their principal places of business in other states. Defendants further contend that this Court
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`does not have specific personal jurisdiction because, among other reasons, the lawsuit does not
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`arise from Defendants’ contacts with Tennessee in that Defendants have never sold Pale Ale or
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`used “Palegate” advertisements in Tennessee. Absent personal jurisdiction, the Middle District of
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`Tennessee is an improper venue, and the lawsuit should be dismissed or, in the alternative,
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`transferred to the only district that is common to both Defendants: the District of Delaware.
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`2
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`ARGUMENT AND CITATION OF AUTHORITY
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`I.
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`THE COURT SHOULD DISMISS THIS ACTION UNDER FED. R. CIV. P. 12(B)(2)
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`BECAUSE DEFENDANTS HAVE INSUFFICIENT CONTACTS WITH
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`TENNESSEE TO BE SUBJECT TO GENERAL OR SPECIFIC PERSONAL
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`JURISDICTION.
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`Tailgate has the burden of persuasion to show that this Court may exercise personal
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`jurisdiction over each of the Defendants. One Media IP Ltd. v. S.A.A.R. SrL, 122 F. Supp. 3d 705,
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`715 (M.D. Tenn. 2015) (citations omitted). However, Tailgate cannot meet this burden because
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`there is neither general nor specific personal jurisdiction over Defendants.
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`The Tennessee long-arm statute in combination with federal due process requirements sets
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`the limitations on this court’s exercise of personal jurisdiction. Susan McKnight, Inc. v. United
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`Indus. Corp., 273 F. Supp. 3d 874, 879 (W.D. Tenn. 2017) (citations omitted). “The jurisdictional
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`limits of Tennessee law and of the federal constitutional law of due process are identical.” Id.; see
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`also Tenn. Code Ann. § 20-2-214. Being identical, this court “need only determine whether
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`exercising personal
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`jurisdiction over the defendant
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`is consistent with federal due process
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`requirements”, which means “certain minimum contacts with the [forum state] such that the
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`maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’”
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`Susan McKnight, 273 F. Supp. 3d at 879–80.
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`“General jurisdiction exists when a defendant has continuous and systematic contacts with
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`the forum state sufficient to justify the state's exercise of judicial power with respect to any and all
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`claims.” City of Monroe Emps. Ret. Sys. v. Bridgestone Corp., 399 F.3d 651, 665 (6th Cir. 2005)
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`3
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`(citation omitted). These continuous and systematic contacts must make a corporation “essentially
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`at home” in the forum state. Brown v. Lockheed Martin Corp., 814 F.3d 619, 627 (2d Cir. 2016)
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`(citing Daimler AG v. Bauman, 571 U.S. 117, 138–39 (2014)). “[T]he paradigm forum for the
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`exercise of general jurisdiction is the individual’s domicile; for a corporation, it is an equivalent
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`place, one in which the corporation is fairly regarded as at home.” Ramsey v. Greenbush Logistics,
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`Inc., 263 F. Supp. 3d 672, 677 (M.D. Tenn. 2017) (citation omitted).
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`“With respect to a
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`corporation, the place of incorporation and principal place of business are ‘[p]aradigm…bases for
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`general jurisdiction[.]’” Id. General jurisdiction may exist even where the forum state is neither
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`the place of incorporation nor the principal place of business; however, these cases are “truly
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`‘exceptional’” and must be based on more than just “sizeable” sales. See Daimler AG, 571 U.S.
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`at 139; Brown, 814 F.3d at 627; see also Ramsey, 263 F. Supp. 3d at 677–78 (holding that sending
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`trucks into Tennessee on a weekly basis did not establish the continuous and systematic contacts
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`necessary to render the defendant at home in Tennessee).
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`Courts within the Sixth Circuit determine specific personal jurisdiction according to the
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`Mohasco test. One Media, 122 F. Supp. 3d at 716. The three elements of the Mohasco are as
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`follows:
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`(1) “[T]he defendant must purposefully avail himself of the
`privilege of acting in the forum state or causing a consequence in
`the forum state.”
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`(2) “[T]he cause of action must arise from the defendant’s activities
`in the forum state.[”]
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`(3) “[T]he acts of the defendant or consequences caused by the
`defendant must have a substantial enough connection with the forum
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`state to make the exercise of personal jurisdiction reasonable.”
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`Id. The first element—purposeful availment—requires more than just the placement of a product
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`into the stream of commerce under the “stream of commerce ‘plus’ approach” adopted by the Sixth
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`Circuit.
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`Id. (citations omitted).
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`“Purposeful availment is something akin to a deliberate
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`undertaking to do or cause an act or thing to be done in the forum state or conduct which can be
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`properly regarded as a prime generating cause of the effects resulting in the forum state … [such
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`that a defendant] should reasonably anticipate being haled into court there.” Id. Factors considered
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`in determining whether a defendant has purposefully availed itself of a forum include: “(1) the
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`defendant’s direction or control over the flow of the product into the forum; (2) the quantity of the
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`defendant’s particular product regularly flowing into the forum; and (3) the distinctive features of
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`the forum that connect it with the product in question.” Id. at 717. Specific personal jurisdiction
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`is not proper if a defendant’s contacts are distinct from the claims at issue. Invisible Fence, Inc. v.
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`Fido’s Fences, Inc., 687 F. Supp. 2d 726, 734 (E.D. Tenn. 2009) (citations omitted).
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`A.
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`Tailgate Cannot Meet the Significant Burden of Showing That Defendants Are
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`Essentially at Home in Tennessee Such That They Are Subject to General
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`Personal Jurisdiction.
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`There should be no dispute that Defendants’ contacts with Tennessee do not permit this
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`Court to exercise general personal jurisdiction under the stringent Daimler standard. Tailgate
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`cannot show that Tennessee is a paradigm forum because neither of the Defendants is incorporated
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`or has its principal place of business in Tennessee. (See Complaint at ¶¶ 11–12; Declaration of
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`Jeffrey A. Krum at ¶¶ 4–5, attached as EXHIBIT A; Defs.’ Certificates of Incorporation, attached
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`as EXHIBIT B). DUSA is a Delaware corporation, and has its principle place of business in
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`Cooperstown, New York.
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`(Ex. A at ¶ 4). Boulevard is a Delaware corporation, and has its
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`principle place of business in Kansas City, Missouri.
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`(Id. at ¶ 5). Defendants do not have an
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`office, warehouse, or any physical presence in Tennessee. (Id. at ¶ 6).
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`Tailgate also cannot show that this is an exceptional case. An exceptional case is, for
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`example, where a corporation is sued in the state where it has temporarily relocated its principal
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`place of business, i.e., a surrogate forum state. See Brown, 814 F.3d at 629 (discussing the Daimler
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`Court’s citation to Perkins v. Benguet Consol. Mining Co., 342 U.S. 437 (1952)). Tennessee not
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`only is not a surrogate forum state for Defendants, but represents an insubstantial proportion of
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`Defendants’ nationwide and worldwide activities.
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`(See Ex. A at ¶¶ 4–6). Sales to Tennessee
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`distributors represent 0.29% or less of DUSA’s annual revenues for Boulevard branded beer. (Id.
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`at ¶¶ 13–15). Furthermore, DUSA has only ever had one sales representative employee at a time
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`working in Tennessee, while Boulevard has never had any employees in Tennessee. (Id. at ¶¶ 23–
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`31). If the United States Supreme Court found that sales in one state totaling 2.4% of worldwide
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`sales did not suffice to establish general jurisdiction, lower percentages should not suffice here.
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`See Brown, 814 F.3d at 628–29 (citing Daimler, 571 U.S. at 123, and further discussing how
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`generating $160 million in revenue and employing between 30 and 70 workers in a state during a
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`four-year period was not sufficient for general jurisdiction where the revenue never exceeded
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`0.107% of the company’s total annual revenue and the employees represented less than 0.05% of
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`the company’s full workforce).
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`Boulevard allegedly being authorized to do business in Tennessee does not suffice as
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`consent to general jurisdiction either.2 Id. at 637 (stating that “federal due process rights likely
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`constrain an interpretation that transforms a run-of-the-mill registration and appointment statute
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`into a corporate ‘consent’—perhaps unwitting—to the exercise of general jurisdiction by state
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`courts, particularly in circumstances where the state’s interests seem limited”).
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`Accordingly, Tailgate’s only option is to show that this Court has specific personal
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`jurisdiction, which, for the reasons set forth below, it cannot do.
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`B.
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`Tailgate Cannot Meet Its Burden to Establish Specific Personal Jurisdiction
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`Because Any Contacts That Defendants May Have with Tennessee Are
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`Unrelated to the Product That Is the Subject of This Lawsuit.
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`The most important reason that there is no specific personal jurisdiction over Defendants
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`is that “Palegate,” and the pickup truck applied-for-mark that are the subject of Tailgate’s claims
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`against Defendants in this lawsuit, have nothing to do with the limited activities of Defendants in
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`Tennessee. For this and other reasons set forth below, this Court should dismiss or, in the
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`alternative, transfer this case to another district.
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`1.
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`This Lawsuit Does Not Arise from Defendants’ Activities in Tennessee.
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`This Court does not have specific personal
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`jurisdiction over Defendants because
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`Defendants have NEVER sold or caused Boulevard Pale Ale to be sold—with or without the
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`2 Tailgate has not pleaded any allegations relating to DUSA being registered to do business in
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`Tennessee. (See Complaint at ¶¶ 11–12).
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`pickup truck applied-for-mark—in the State of Tennessee. (Ex. A at ¶¶ 19–22). Beer also cannot
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`be purchased through Defendants’ website. (Id. at ¶ 33). Thus, a beer drinker in Tennessee would
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`have to go outside the State of Tennessee to enjoy a Boulevard Pale Ale.
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`The utter lack of any sales of Boulevard Pale Ale in Tennessee explains the absence of any
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`specific allegations of use of “Palegate” or sales of products bearing the pickup truck applied-for-
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`mark in Tennessee in Tailgate’s Complaint.
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`Instead, Tailgate tries to rely on conclusory
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`allegations of beer and merchandise sales in Tennessee, assuming that these sales must have
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`included sales of Boulevard Pale Ale to Tennessee customers. (See, e.g., Complaint at ¶¶ 15, 40–
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`41). This is not sufficient to meet Tailgate’s burden. See Dlorah, Inc. v. Nau Holdings, LLC, No.
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`CIV. 08-5091-RHB, 2009 WL 1107533, at *5 (D.S.D. Apr. 23, 2009)3 (“Plaintiff identifies just
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`one contact between Nau Holdings and South Dakota … Of critical importance is the fact that this
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`contact is not identified in plaintiff’s complaint. … This does not satisfy the burden plaintiff faces
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`at this juncture, which is to ‘state sufficient facts in the complaint’ to support an inference that
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`defendants are subject to jurisdiction in South Dakota. … Plaintiff’s complaint contains nothing
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`more than conclusory allegations regarding jurisdiction … and those allegations are unsupported
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`by facts. Consequently, … plaintiff’s complaint is deficient …”) (emphasis in original).
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`Tailgate cannot rely on merchandise sales to prove its case either. Boulevard has reviewed
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`its sales data from its online gift shop.
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`(Ex. A at ¶¶ 34–39). From 2016 through present, one
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`3 All unpublished cases cited in this Memorandum are attached in EXHIBIT D pursuant to L.R.
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`7.01(e)(5).
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`8
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`consumer in Tennessee purchased three sets of six pint glasses. (Id. at ¶¶ 34, 38). One glass in
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`each of the three sets included the pickup truck applied-for-mark. (Id. at ¶ 38). There have been
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`no other sales of merchandise bearing the subject mark in Tennessee.
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`(Id.). A single sale by
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`Boulevard is not sufficient to confer specific personal jurisdiction, whether as to Boulevard or
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`DUSA, the non-seller. See One Media, 122 F. Supp. 3d at 718–19 (holding that the cause of action
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`cannot arise from Tennessee contacts if a negligible nine downloads was not sufficient for the
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`defendant to purposefully avail itself of the forum); see also Dlorah, 2009 WL 1107533, at *6;
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`Tate & Lyle Sucralose, Inc. v. Hebei Sukeri Sci. & Tech. Co., No. 06-2102, 2006 WL 3391421, at
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`*4 (C.D. Ill. Nov. 22, 2006) (collectively discussing the insufficiency of a single sale in connection
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`with the reasonableness element and the necessity of satisfying due process requirements).
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`Tailgate cannot even rely on the “Palegate” promotion. Boulevard ran a “Palegate”
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`promotion focused on consumers in the greater Kansas City metro area for the purpose of
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`promoting Boulevard Pale Ale. (Ex. A at ¶¶ 41–42, 45–46). The promotion was for fifty sets of
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`two tickets to a Kansas City Royals home game, and was only available to legal residents of
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`Missouri, Kansas, Nebraska, and Iowa. (Id. at ¶¶ 41, 43ؘ–44). Tailgate’s Complaint even tacitly
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`admits the uniquely local nature of the “Palegate” promotion by its inclusion of the Royals-specific
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`advertisements. (Complaint at ¶ 48).
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`Tailgate cannot satisfy all three elements of the Mohasco test when the facts prove that this
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`lawsuit does not arise from Defendants’ contacts with the State of Tennessee. Having failed to
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`meet its burden, this Court should dismiss Tailgate’s Complaint. See Ramsey, 263 F. Supp. 3d at
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`678 (citing Miller v. AXA Winterthur Ins. Co., 694 F.3d 675, 680 (6th Cir. 2012)) (“If any of the
`
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`9
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`three requirements is not met, personal jurisdiction may not be invoked.”).
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`2.
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`Defendants Did Not Purposefully Avail Themselves of the Forum; Even
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`If There Were Purposeful Availment, It Should Not Apply to Both
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`Defendants.
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`This Court should find that one if not both Defendants’ contacts with Tennessee are so
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`“random, fortuitous, [and] attenuated” that they should be protected from having to defend this
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`lawsuit in Tennessee. See Invisible Fence, 687 F. Supp. 2d at 735 (interior quotations omitted).
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`Tailgate overstates the relevance of the beer sales in Tennessee in the Complaint, even
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`notwithstanding that none of the beer sold is Boulevard Pale Ale. (Complaint at ¶ 15; Ex. A at ¶¶
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`19–22). Defendants admit that DUSA has written distribution agreements with eight distributors
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`that service the State of Tennessee. (Ex. A at ¶ 11). Seven of the eight distributors have rights to
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`sell Boulevard-brand malt beverage products.
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`(Id.). However, each of the written distribution
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`agreements with the seven distributors of Boulevard-brand malt beverage products in Tennessee
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`specifies that “[a]ll prices will be FOB the brewery or other warehouse(s) designated by [Duvel
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`Moortgat USA, Ltd.].” (Id. at ¶ 16). Thus, title and risk of loss passes away from DUSA at
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`DUSA’s warehouse dock, which is not in Tennessee. (Id. at ¶¶ 6, 16–18). Yet, even if any of the
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`non-Boulevard Pale Ale products were shipped “FOB Tennessee”, this still would not be a basis
`
`to find that DUSA or Boulevard purposefully availed themselves of the forum. See Noval Int’l
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`Resources, LLC v. Andec, Inc., 875 F. Supp. 2d 804, 812 (W.D. Tenn. 2012) (citations omitted)
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`(“The Court notes that ‘FOB” or ‘free on board’ indicates in commercial sales that ‘the seller’s
`
`delivery is complete (and the risk of loss passes to the buyer) when the goods pass the transporter’s
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`10
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`rail.’ Several federal courts have held that a non-resident does not intentionally avail itself of
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`doing business in the forum state simply by shipping goods FOB to the forum.”); see also Susan
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`McKnight, 273 F. Supp. 3d at 884 (citing Mullins v. Harley-Davidson Yamaha BMW of Memphis,
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`Inc., 924 S.W.2d 907, 912 (Tenn. Ct. App. 1996); Davis Kidd Booksellers v. Day-Impex, 832
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`S.W.2d 572, 574 (Tenn. Ct. App. 1992)) (stating, “[i]n non-patent Tennessee cases, a third-party
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`sale is unlikely to afford the court specific jurisdiction over the defendant.”).
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`Tailgate’s allegations that there is personal jurisdiction because of advertising are equally
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`unavailing.
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`(Complaint at ¶¶ 15, 17). Courts have found that even national advertising—as
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`opposed to the local “Palegate” advertisement at issue here—does not constitute purposeful
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`availment in and of itself. Invisible Fence, 687 F. Supp. 2d at 738 (citing Bridgeport Music, Inc.
`
`v. Still N The Water Publ’g, 327 F.3d 472, 481 n.10 (6th Cir. 2003)) (discussing how the Sixth
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`Circuit has referred to decisions in other courts holding that national advertising does not satisfy
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`the purposeful availment element); see also Ex. A at ¶¶ 41–46.
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`Even if this Court were to focus instead on website activity, there was not a single purchase
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`in Tennessee from Boulevard’s website that was specific to merchandise bearing the pickup truck
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`applied-for-mark.
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`(Ex. A at ¶ 38). The purchase of the three sets of glasses just happened to
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`contain one glass each bearing the pickup truck applied-for-mark.
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`(Id.). There is no similar
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`website activity for DUSA, which does not have an online gift shop. (Id. at ¶ 40). Websites that
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`do not permit online sales generally do not meet the requisite level of interactivity for a defendant
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`to purposefully avail itself of a forum. Invisible Fence, 687 F. Supp. 2d at 736–37 (citing Neogen
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`Corp. v. Neo Gen Screening, Inc., 282 F.3d 883, 890 (6th Cir. 2002)) (“allud[ing] that a ‘classic
`
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`11
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`passive site’ is one that ‘does not allow a visitor to the site to purchase products or otherwise
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`directly transact business over the site.’”).
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`These facts illustrate that control or direction of beer products, a quantity of contacts
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`involving the pickup truck applied-for-mark, and any connection between the pickup truck
`
`applied-for-mark and Tennessee are absent here. Accordingly, Tailgate cannot satisfy the
`
`purposeful availment element as to both Defendants.
`
`3.
`
`Defendants’ Contacts with Tennessee Are So De Minimis as to Make the
`
`Exercise of Specific Personal Jurisdiction Unreasonable.
`
`Courts consider five factors to determine the reasonableness of exercising personal
`
`jurisdiction: “(1) the burden on the defendant, (2) the forum State’s interest in adjudicating the
`
`dispute, (3) the plaintiff’s interest in obtaining convenient and effective relief, (4) the interstate
`
`judicial system’s interest in obtaining the most efficient resolution of controversies, and (5) the
`
`shared interest of the several States in furthering fundamental substantive social policies.” Susan
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`McKnight, 273 F. Supp. 3d at 888 (citations omitted).
`
`Defendants do not contest that the third factor weighs in Tailgate’s favor. The fifth factor
`
`is not impactful where, as here, the claims are matters of federal law. Id. at 889.
`
`Instead, Defendants focus on the first, second, and fourth factors. The first factor should
`
`weigh in favor of Defendants because the burden on Defendants is significant. DUSA did not sell
`
`any allegedly infringing products with the pickup truck applied-for-mark and did not control or
`
`direct the allegedly infringing “Palegate” advertisements into Tennessee. (Ex. A at ¶¶ 19, 21, 40–
`
`41, 46). Boulevard’s only contact in Tennessee relevant to the claims at issue is the single sale of
`
`4845-2438-2061
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`12
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`a beer glass set. (Id. at ¶ 38). Defendants could not reasonably expect to be haled into court in
`
`Tennessee under these circumstances. See Dlorah, 2009 WL 1107533, at *6; Tate & Lyle
`
`Sucralose, 2006 WL 3391421, at *4.
`
`Defendants further could not reasonably expect to be haled into court in Tennessee for a
`
`mark that neither of them owns. The mark is owned by IPACK S.A.R.L., which is a limited
`
`liability company organized under the laws of Luxembourg and a non-party to this lawsuit.4 (See
`
`Trademark Application, attached as EXHIBIT C). If this lawsuit continues in Tennessee, there is
`
`likely to be substantial inconvenience for some of Defendants’ witnesses, who are domiciled
`
`outside the United States.
`
`The second factor should also weigh in favor of Defendants. There were already two
`
`proceedings pending before TTAB, which were recently consolidated. One is Tailgate’s
`
`opposition to the registration of the pickup truck applied-for-mark; the other is a petition to cancel
`
`the “Pickup Mark,” as it is called in Tailgate’s Complaint, because of abandonment.
`
`IPACK
`
`S.A.R.L.’s success in defeating the opposition to its pickup truck applied-for-mark and/or
`
`cancelling the Pickup Mark will be highly persuasive, if not dispositive of Tailgate’s claims in this
`
`lawsuit.
`
`Tailgate has already suffered an initial defeat before the USPTO.
`
`IPACK S.A.R.L.
`
`submitted an application for registration of the pickup truck applied-for-mark on December 7,
`
`4 Defendants will further address the importance of the applied-for-mark’s ownership in a
`
`subsequent Rule 12(b)(7) motion, if necessary.
`
`4845-2438-2061
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`2017. The mark was reviewed by the Trademark Examiner, who found no likelihood of confusion
`
`with any other registered or pending mark and allowed the mark to publish in the Official Gazette
`
`on May 22, 2018. Prior to this publication, a Letter of Protest was filed with the USPTO on April
`
`11, 2018. Defendants suspect that the Letter of Protest was filed by Tailgate. The Letter of Protest
`
`was “accepted” for review, considered, and rejected.
`
`If the USPTO ultimately determines that
`
`IPACK S.A.R.L.’s pickup truck applied-for-mark should be registered over Tailgate’s objection,
`
`Tailgate’s claims will be mooted.
`
`All of the above facts affect the fourth factor, resulting in it weighing in favor of Defendants
`
`too. The most efficient resolution of issues relating to a mark belonging to non-party IPACK
`
`S.A.R.L. is before TTAB. Yet, even if this Court determines that Tailgate’s claims are more
`
`appropriately decided before a district court, the most efficient resolution still will not be before
`
`this Court. DUSA has no contacts in Tennessee relevant to the claims at issue in this lawsuit. The
`
`most optimistic outcome for Tailgate thus will force it to litigate its claims in two separate federal
`
`district courts if it proceeds against both of the current Defendants.
`
`With only one of five factors weighing in favor of Tailgate, it would be unreasonable for
`
`this Court to find that the exercise of personal jurisdiction over Defendants is reasonable and
`
`comports with the requirements of due process.
`
`4845-2438-2061
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`14
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`

`

`II.
`
`IF THIS LAWSUIT IS NOT DISMISSED, THIS COURT SHOULD TRANSFER
`
`THIS LAWSUIT TO ANOTHER DISTRICT BECAUSE THIS FORUM IS AN
`
`IMPROPER VENUE.
`
`A.
`
`Transfer to the District of Delaware Would Be Appropriate Under 28 U.S.C.
`
`§ 1406.
`
`It is Defendants’ position that this Court lacks personal jurisdiction for the reasons set forth
`
`in Section I, supra. Lack of personal jurisdiction makes venue in the Middle District of Tennessee
`
`improper. See generally 28 U.S.C. § 1391. Changing the venue (if there is no outright dismissal)
`
`is governed by 28 U.S.C. § 1406. See Ramsey, 263 F. Supp. 3d at 679 (citations omitted).
`
`Section 1406 … provides that “[t]he district court of a district in
`which is filed a case laying venue in the wrong division or district
`shall dismiss, or if it be in the interest of justice, transfer such case
`to any district or division in which it could have been brought.” …
`It “applies to actions that are brought in an impermissible forum; the
`district court need not have personal jurisdiction over defendants
`before transferring pursuant to this section.”
`
`Id.
`
`The only forum common to both Defendants is the District of Delaware. (Ex. A at ¶¶ 4–
`
`5). Therefore, if this Court finds that the interests of justice dictate transfer instead of dismissal,
`
`then it is to the foregoing district to which transfer should occur.
`
`B.
`
`Even If This Court Were to Find That It Has Personal Jurisdiction Over
`
`Boulevard But Not DUSA, Transfer to the District of Delaware for Forum Non
`
`Conveniens Is Appropriate Because It Is the Only Forum Common to Both.
`
`“Section 1404 provides that, ‘[f]or the convenience of parties and witnesses, in the interest
`
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`15
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`

`

`of justice, a district court may transfer any civil action to any other district or division where it
`
`might have been brought[.]’” Ramsey, 263 F. Supp. 3d at 678 (citation omitted). Transfer for
`
`forum non conveniens is only appropriate where a district court has personal jurisdiction over the
`
`defendants. Id. at 678−79.
`
`In the alternative to dismissal or transfer under § 1406 if one of the Defendants is found to
`
`be subject to personal jurisdiction in Tennessee, Defendants request that this Court transfer this
`
`lawsuit to the District of Delaware to avoid duplicative litigation and the potential of inconsistent
`
`results from lawsuits pending in two forums.
`
`CONCLUSION
`
`For the above reasons, Defendants’ Motion should be granted and the Complaint
`
`dismissed. Alternatively, the case should be transferred to the District of Delaware as the proper
`
`venue.
`
`4845-2438-2061
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`16
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`

`

`Dated: July 13, 2018
`
`Respectfully submitted,
`
`KUTAK ROCK LLP
`
`By /s/ Gregory R. Crochet
`Gregory R. Crochet (TN Bar #26962)
`303 Peachtree Street NE, Suite 2750
`Atlanta, GA 30308-3218
`(404) 222-4600 (Telephone)
`(404) 222-4654 (Facsimile)
`Greg.Crochet@kutakrock.com
`
`DEFENDANTS
`FOR
`ATTORNEYS
`BOULEVARD BREWING COMPANY
`AND DUVEL MOORTGAT USA, LTD.
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on July 13, 2018, Defendants’ Memorandum in Support of Motion to
`
`Dismiss for Lack of Personal Jurisdiction and Improper Venue was filed using the Court’s
`
`CM/ECF e-filing system, which will send notification of such filing to the following counsel of
`
`record:
`
`Richard S. Busch
`Joshua D. Wilson
`King & Ballow
`315 Union Street
`Suite 1100
`Nashville, TN 37201
`(615) 259−3456
`Email: rbusch@kingballow.com
`Email: jwilson@kingballow.com
`ATTORNEYS FOR PLAINTIFF
`
`/s/ Gregory R. Crochet
`Gregory R. Crochet
`
`17
`
`4845-2438-2061
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`

`

`EXHIBIT A
`EXHIBIT A
`
`
`
`Case 3:18-cv-00563 Document