Muertos Roasters, LLC v. Schneider
2:22-cv-00051
E.D. Cal.Aug 30, 2022Background
- Muertos Roasters (California) sued Fire Department Coffee and co‑founders Luke Schneider and Lawrence Walton (Illinois) for trademark/trade dress infringement based on a Dia de los Muertos/firefighter design.
- Defendants moved to dismiss under Rule 12(b)(6), arguing Muertos Roasters does not own the asserted federal registrations; USPTO records show Cup Half Full Holdings, Inc. (CHFH) owns the registrations.
- Plaintiff filed a late opposition with a declaration from CHFH/Muertos Roasters chairman Joshua Held asserting CHFH assigned the marks to Muertos Roasters and attached an unrecorded assignment agreement.
- The court took judicial notice of USPTO records and found those records contradicted plaintiff’s ownership allegations; the unrecorded assignment was not pleaded or judicially noticeable.
- Schneider moved under Rule 12(b)(2) to dismiss for lack of personal jurisdiction; plaintiff submitted only bare, conclusory allegations and no jurisdictional evidence.
- The court granted both motions with leave to amend, declining to rule on Schneider’s alternative transfer request.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership of asserted federal marks (12(b)(6)) | Muertos Roasters owns the registrations by virtue of an assignment from CHFH (decl. and attached assignment). | USPTO records show CHFH is the registered owner of the applications/registrations; plaintiff’s complaint alleges Muertos Roasters as registrant. | Dismiss for failure to state a claim: judicially noticed USPTO records contradict plaintiff’s asserted ownership; unrecorded assignment not properly before court. |
| Personal jurisdiction over Schneider (12(b)(2)) | Schneider personally participated in directing infringing acts at a California company, satisfying effects test. | Schneider lacks meaningful contacts with California; plaintiff offers only conclusory allegations and no evidence. | Dismiss for lack of personal jurisdiction: plaintiff failed to make a prima facie showing or allege specific facts showing Schneider was a "guiding spirit" or primary participant. |
Key Cases Cited
- Metro Pub., Ltd. v. San Jose Mercury News, 987 F.2d 637 (9th Cir. 1993) (USPTO registrations and public records are proper subjects of judicial notice)
- Reyn’s Pasta Bella, LLC v. Visa USA, Inc., 442 F.3d 741 (9th Cir. 2006) (online USPTO file and public records may be judicially noticed)
- Sprewell v. Golden State Warriors, 266 F.3d 979 (9th Cir. 2001) (court need not accept allegations that contradict judicially noticed facts)
- Calder v. Jones, 465 U.S. 783 (U.S. 1984) (effects test and requirement to assess each defendant’s contacts individually)
- Rush v. Savchuk, 444 U.S. 320 (U.S. 1980) (cannot aggregate co‑defendants’ contacts for personal jurisdiction)
- Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218 (9th Cir. 2011) (formulation of the Calder effects test)
- Boschetto v. Hansing, 539 F.3d 1011 (9th Cir. 2008) (plaintiff bears burden to establish personal jurisdiction)
- Tuazon v. R.J. Reynolds Tobacco Co., 433 F.3d 1163 (9th Cir. 2006) (prima facie showing standard when no evidentiary hearing on jurisdiction)
- Swartz v. KPMG LLP, 476 F.3d 756 (9th Cir. 2007) (bare‑bones assertions of contacts are insufficient to plead jurisdiction)
- Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797 (9th Cir. 2004) (uncontroverted factual allegations are taken as true for jurisdictional analysis)
- Ind. Plumbing Supply, Inc. v. Standard of Lynn, Inc., 880 F. Supp. 743 (C.D. Cal. 1995) (example distinguishing corporate and personal liability/jurisdictional contacts)
- Ketayi v. Health Enrollment Grp., 516 F. Supp. 3d 1092 (S.D. Cal. 2021) (legal conclusions are not entitled to the court’s acceptance when assessing jurisdiction)