193 F. Supp. 3d 1310
S.D. Fla.2016Background
- BTG Patent Holdings, LLC (Nevada LLC) owns registered trademarks for "BAGS TO GO" used in baggage delivery and branded travel bags; alleges consumer confusion from defendants’ use of "BAG2GO."
- Defendants: Bag2Go, GmbH and its CEO Jan Reh (German citizens) and Rimowa Distribution, Inc. and Rimowa, Inc. (Delaware corporations). BTG alleges Bag2Go/Reh promoted BAG2GO and planned U.S. launches; Rimowa Defendants announced co-branded goods and a press release with Airbus and allegedly will distribute BAG2GO-branded luggage in the U.S.
- BTG sued for Lanham Act trademark infringement and unfair competition (15 U.S.C. §§ 1114, 1125(a)) and parallel common-law claims; parallel suit pending in Nevada.
- Bag2Go and Reh moved to dismiss for lack of personal jurisdiction; Rimowa Defendants moved to dismiss under Rule 12(b)(6) arguing BTG failed to allege "use in commerce."
- Court found no personal jurisdiction over Bag2Go and Reh (Florida long-arm, Due Process, or Rule 4(k)(2)) and dismissed them; denied Rimowa Defendants’ Rule 12(b)(6) motion, finding BTG plausibly alleged use in connection with sale/advertising likely to cause confusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Personal jurisdiction over Bag2Go/Reh under Fla. long-arm and Due Process | Bag2Go/Reh promoted BAG2GO via trade shows, press releases, and social media reaching U.S./Florida; injury felt in Florida because BTG’s licensees operate there | Defendants lack substantial or purposeful contacts with Florida; no sales/marketing in Florida; distinct corporate actors (Rimowa) do not make Bag2Go/Reh amenable | Court: No personal jurisdiction — neither general nor specific jurisdiction satisfied; contacts not purposefully aimed at Florida; no alter-ego showing. Bag2Go and Reh dismissed. |
| Personal jurisdiction under Fed. R. Civ. P. 4(k)(2) | Aggregating national contacts supports jurisdiction over foreign defendants for federal claims | Rule 4(k)(2) inapplicable where defendant is amenable to jurisdiction in some state; Bag2Go/Reh were served in Nevada; Rule 4(k)(2) negative requirement not met | Court: 4(k)(2) does not support jurisdiction here (parallel Nevada suit and service); declined to exercise jurisdiction. |
| Whether complaint alleges "use in commerce" for Lanham Act claims against Rimowa Defendants | Alleged press release, co-branded luggage, and planned U.S. distribution show use in connection with sale/advertising affecting interstate commerce and likely to cause confusion | §1127 narrowly defines "use in commerce" (goods sold/transported or services rendered in commerce); Rimowa allegedly did not sell/transport BAG2GO-branded goods in U.S. | Court: Did not apply §1127 exclusivley in infringement context; pleaded allegations (press release, co-branding, U.S. distribution) sufficiently allege use in commerce and likelihood of confusion. Complaint survives. |
| Sufficiency of state-law common-law claims | Florida common-law claims mirror federal Lanham Act standards; BTG alleges confusion and harm | Rimowa argues federal defect (no "use in commerce") defeats state claims too | Court: State-law claims survive because federal claims survive; legal standards same. |
Key Cases Cited
- Stubbs v. Wyndham Nassau Resort & Crystal Palace Casino, 447 F.3d 1357 (11th Cir.) (prima facie standard for personal jurisdiction on motion to dismiss)
- Licciardello v. Lovelady, 544 F.3d 1280 (11th Cir.) (intentional torts and website accessibility can support specific jurisdiction when injury occurs where mark-holder resides)
- Louis Vuitton Malletier, S.A. v. Mosseri, 736 F.3d 1339 (11th Cir.) (specific jurisdiction where website facilitated sales to forum; long-arm and due process analysis)
- N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir.) (Lanham Act "use in commerce" in infringement context can be satisfied by advertising/meta-tag use affecting interstate commerce)
- Calder v. Jones, 465 U.S. 783 (U.S.) (Calder effects test: intentional torts expressly aimed at forum may support jurisdiction)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S.) (plausibility pleading standard under Rule 12(b)(6))
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (U.S.) (complaint must state plausible claim, not mere labels and conclusions)