MEMORANDUM OPINION
There are two motions presently before the Court in this matter: (1) defendant’s motion to dismiss plaintiffs Complaint pursuant to Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction, or in
I. BACKGROUND
On January 2, 1996, plaintiff One World Botanicals Ltd. (“On World”), a New Jersey Corporation, filed an intent-to-use trademark application for the mark “NOAH’S KINGDOM and Design” for pet products. (Decl. of Michael S. Katzman in Supp. of Pl.’s Mot. for Prelim. Inj. ¶ 2 (“Katzman Decl. II”) 1 .) One World’s mark contains the words “NOAH’S KINGDOM,” combined with a design comprised of several animals and a rainbow which forms an arch above the words and animals. (Id.) The animals included in the mark are a lion, cat, dog, giraffe and elephant. (Id.) For purposes of this motion, the Court will refer to the combination of these words and design as One World’s NOAH’S KINGDOM mark. It appears that One World has not yet received its Certificate of Registration for its NOAH’S KINGDOM mark from the Trademark Office (Decl. of Arthur H. Seidel in Supp. of Pl.’s Mot. for Prelim. Inj. ¶3.) (“Seidel Decl. II”).) 2 Plaintiffs most recent communication from the Trademark Office in connection with One World’s application indicates, however, that its mark will pass to registration on the Principal Register, pending minor formalities. (Id.)
One World began using its NOAH’S KINGDOM mark-as early as February 23, 1996 on various products, including food and edible treats for animals and birds. (Katz-man Decl. II ¶ 3.) In May 1996, One World expanded its usage of its NOAH’S KINGDOM mark to other pet goods, including whole life cycle multi-supplements, antioxidants, shampoos, conditioners, first aid ointments, ear washes, and acidophilus for cats and dogs. (Id.) Since those dates, One World maintains that it has continuously used its NOAH’S KINGDOM mark on these products. (Id. ¶ 5.) One World also claims that it has advertised and sold its products under the NOAH’S KINGDOM mark in interstate commerce. (Id. ¶ 6-7.) 3
Defendant, Gulf Coast Nutritionals, Inc., (“Gulf Coast”) was incorporated in Florida on or about August 22, 1996. (Seidel Decl. I ¶ 10.) Subsequent to One World’s adoption and use of its NOAH’S KINGDOM mark, defendant, through its president and majority shareholder, Susan Weiss, created the mark NOAH’S ARK and used it in connection with the sale of various pet products, including anti-oxidants and other pet supplements. (Katzman Decl. II ¶ 12.) Defendant’s mark consists of the words NOAH’S ARK, along with a design that includes five animals and an arch above the words and animals. (Id.) The five animals included in defendant’s mark are the same animals found on plaintiffs NOAH’S KINGDOM mark, namely a giraffe, cat, lion, dog and elephant. (Id.) For purposes of clarity, the Court will refer to the combination of these words and design as Gulf Coast’s NOAH’S ARK mark.
Shortly after defendant’s use of its NOAH’S ARK mark became known to plaintiff, One World’s intellectual property counsel, Arthur H. Seidel, Esq., contacted Weiss via letter dated May 5,1997. . (Seidel Decl. I, Ex. A.) Seidel stated that defendant’s NOAH’S ARK mark infringed his client’s NOAH’S KINGDOM mark and that use of the NOAH’S ARK mark constituted trademark infringement, federal unfair competition and common law unfair competition. (Id.) Seidel requested defendant to discontinue its use of the NOAH’S ARK mark or face possible litigation. (Id.). In response, defendant’s Florida counsel,. Merrill N. Johnson, Esq., contacted One World’s counsel and requested an extension of time in which to respond to Seidel’s May 5, 1997 letter. (Id. ¶ 3.) Johnson agreed to the extension of time, and sent a confirmation letter on May 8, 1997. By letter dated May 14, 1997, Seidel confirmed Johnson’s additional time to respond. (Id. ¶ 5.) Enclosed with that correspondence was a copy of the file wrapper of One World’s trademark application. (Id.)
Correspondence between the parties lapsed until June 2, 1997, when Seidel received a letter dated May 30, 1997 from Johnson. (Id . ¶ 6.) Enclosed with the letter was a Complaint for Declaratory Judgment filed by Gulf Coast against One World in the United States District Court for the Middle District of Florida, the “Florida action.” (Id.; see Def.’s Br. in Supp. of Mot. to Dismiss or Transfer Venue, Ex. B. (“Def.’s Br. in Supp.”).) On June 13,1997, Michael Katz-man, president of One World signed and returned to defendant’s Florida counsel a waiver of service, which was properly filed with the clerk of the. court in Fort Meyers, Florida. (Def.’s Br. in Supp. at 2.)
On June 6, 1997, approximately one week after Gulf Coast filed its Complaint in the Florida action, One World filed its Complaint in this Court. (Pl.’s Br. in Opp’n to Def.’s Mot. to Dismiss or Transfer Venue at 5 (“Pl.’s Br. in Opp’n”).) In response, defendant filed its motion to dismiss this action, or in the alternative, transfer venue to the United States District Court for the Middle District of Florida. With defendant’s motion pending in this Court, plaintiff filed its motion for a preliminary injunction. (See Notice of Mot. for Emerg. Order to Show Cause and Prelim. Inj.) Oral argument was heard before this Court on both motions, and both matters were taken under advisement.
Defendant seeks dismissal of this action, arguing that plaintiff has failed to show that Gulf Coast has sufficient minimum contacts with New Jersey to support in personam jurisdiction. (See Def.’s Br. in Supp. at 2.) Defendant also contends that due to this Court’s lack of jurisdiction, venue is improper. (See id.) Alternatively, defendant contends that this Court should transfer this action to the Middle District of Florida. (Id. at 6.) Plaintiff opposes the motion, arguing that the Court has in personam jurisdiction over defendant, and venue is proper here. (See Pl.’s Br. in Opp’n.)
In support of its injunctive application, plaintiff argues: (1) a likelihood of success on the merits exists; (2) One World has suffered irreparable harm that outweighs the harm to Gulf Coast; and (3) the public interest will be served if the Court grant’s plaintiffs request for relief. Defendant opposes the motion.
II. DISCUSSION
A. Personal Jurisdiction
Rule 4(e) of the Federal Rules of Civil Procedure allows a district court sitting in
The Due Process Clause of the Fourteenth Amendment
limits the reach of long-arm statutes so that a court may not assert personal jurisdiction over a nonresident defendant who does not have “certain minimum contacts with [the forum] such that the maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’ ”
Provident Nat’l Bank,
The plaintiff bears the burden of demonstrating that the defendant’s contacts with the forum state are sufficient to give the court
in personam
jurisdiction.
Apollo Techs. Corp. v. Centrosphere Indus. Corp.,
The plaintiff may meet its bui'den by establishing that a court has either “specific” or “general” jurisdiction.
Provident Nat’l Bank,
When a plaintiff argues that the court has specific jurisdiction over a defendant who has “no continuing presence” in the forum state, the focus must be on minimum contacts.
Dollar Sav. Bank,
A singular contact with a forum state supports the exercise of specific jurisdiction over a defendant where the nature and quality of that contact provides a “substantial connection” with the forum.
Burger King,
Once the plaintiff establishes the requisite minimum contacts, a Court must next analyze whether the exercise of personal jurisdiction is reasonable.
Woodson,
the forum state’s interest in adjudicating the dispute; the plaintiffs interest in obtaining convenient and effective relief, at least when that interest is not adequately protected by the plaintiffs right to choose the forum; the interstate judicial system’s interest in obtaining the most efficient resolution of controversies; and the shared interest of the several states in furthering fundamental substantive social policies.
Burger King,
1. Gulf Coast’s Minimum Contacts with New Jersey
Defendant seeks to have this matter dismissed, arguing that plaintiff has failed to show that Gulf Coast has sufficient minimum contacts with New Jersey to support in personam jurisdiction. (See Def.’s Br. in Supp. at 2.) Defendant admits that it shipped goods bearing its NOAH’S ARK mark to a New Jersey mail order catalog distributor that was a customer of defendant’s predecessor. (Weiss Aff. I ¶ 5.) Nevertheless, defendant maintains that dismissal is proper because it: (1) does not have employees, officers, distributors or representatives in New Jersey; (2) does not own, possess nor use real or personal property in New Jersey; and (3) did not “purposely direct its activities towards New Jersey.” (See Def.’s Br. in Supp. at 3.) Defendant argues instead that it simply placed its products in “the stream of commerce.” (Id.)
Plaintiff contends,
inter alia,
that Gulf Coast’s contacts with New Jersey provide this Court with in personam jurisdiction over defendant.
(See
Pl.’s Br. in Opp.’n at 8-11.) Plaintiff argue that defendant’s singular sale of pet supplies bearing the NOAH’S ARK mark to a New Jersey distributor with the intent to distribute the products throughout the Northeast region satisfies the minimum contacts standard set forth in
International Shoe Co. v. Washington,
We agree with plaintiff and find that it has satisfied its burden of demonstrating that defendant has the requisite minimum contacts with New Jersey to support a finding of specific jurisdiction.
5
It is clear that a
2. Traditional Notions of Fair Play and Substantial Justice
Defendant argues that “the interests of justice favor not haling Gulf Coast into court in New Jersey under the circumstances presented.” (Def.’s Reply Br. at 8.) The Court disagrees. In
Zippo Manufacturing v. Zippo Dot Com Inc.,
There can be no question that Pennsylvania has a, strong interest in adjudicating disputes involving the alleged infringement of trademarks owned by resident corporations. We must also give due regard tothe Plaintiffs choice to seek relief in Pennsylvania. Kulko, 436 U.S. at 92 ,98 S.Ct. at 1696 . These concerns outweigh the burden created by forcing the Defendant to defend the suit in Pennsylvania, especially when [defendant] consciously chose to do business in Pennsylvania.
Id. at 1127. This Court finds the reasoning in Zippo persuasive. As explained in section 11(A)(1), Gulf Coast directed its products to New Jersey, allegedly causing harm to One World, a New Jersey corporation. Defendant consciously chose to do business in New Jersey. Thus, this forum has a strong interest in adjudicating the present dispute.
Furthermore, defendant has not persuaded this Court that jurisdiction is unreasonable. “Once the plaintiff has made out a prima facie case in favor of personal jurisdiction, the defendant ‘must present a compelling case that the presence of some other considerations would render jurisdiction unreasonable.’ ”
Carteret Savings Bank, F.A. v. Shushan,
B. Dismissal Based Upon Improper Venue
Defendant argues that dismissal of One World’s claim is appropriate because venue is improper. Apparently, defendant’s claim of improper venué rests upon the assumption that this Court lacks in personam jurisdiction over Gulf Coast. (See Def.’s Br. in Supp. at 4 (“Gulf Coast Nutritionals’ single contact with New Jersey fails to satisfy the minimum contacts requirement of the Due Process clause of the U.S. Constitution, and personal jurisdiction and venue do not lie in the State of New Jersey.”).) Defendants argument is without merit.
28 U.S.C. § 1391(b) provides in relevant part that “[a] civil action wherein jurisdiction is not founded solely on diversity of citizenship may, except as otherwise provided by law, be brought only in (1) a judicial district where any defendant resides, if all defendants reside in the same State.” 28 U.S.C. § 1391(b)(1). Subsection (c) further provides that a corporate defendant is “deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.” 28 U .S.C. § 1391(c).
Gulf Coast is the only defendant in this case and it is a corporation. (Weiss Aff. I ¶ 1.) Thus, according to the plain language of 28 U.S.C.. § 1391(b)(1) & (e), this Court’s previous discussion of personal jurisdiction is dispositive here.
C. Transfer of Venue
Defendant has moved, in the alternative to its motion to dismiss the action in toto, to transfer venue to the United State District Court for the Middle District of Florida. (Def.’s Br. in Supp. at 4.) In support of its motion, defendant argues that: (1) all relevant documents and other evidence are located in Florida; (2) many relevant witnesses are located in Florida; and (3) the “first-filed” rule applies and requires the Court to transfer this case to the Middle District of Florida where Gulf Coasts pending declaratory judgment action against One World is filed. (Id.)
28 U.S.C. § 1404(a) provides: “[f]or the convenience of parties and witnesses, in the interests 'of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” The purpose of § 1404(a) “is to prevent the waste ‘of time, energy and money’ and ‘to protect litigants, witnesses and the public against unnecessary inconvenience and expense.’ ”
Van Dusen v. Barrack,
The moving party has the burden of establishing the need for transfer.
Jumara v. State Farm Ins. Co.,
Courts apply the first-filed rule where parties have instituted competing or parallel litigation in separate federal courts. Generally, the rule states that the court initially having the controversy before it should retain jurisdiction over the entire case and-decide it.
EEOC v. University of Pa.,
The purpose of the first-filed rule is to promote sound judicial administration and comity among courts in the federal system.
Id.
Nevertheless, the rule “is not a mandate directing wooden application of the rule without regard to rare or extraordinary circumstances, inequitable conduct, bad faith or forum shopping.”
Id.
at 972. Thus, the Third Circuit has recognized that “no precise rule governs relations between federal district courts possessing jurisdiction, but the general principle is to avoid duplicative litigation.”
Id.
(citing
Colorado River Water Conserv. Dist. v. United States,
a. Convenience of Parties and Witnesses and the Interests of Justice.
Defendant first argues that the Court should transfer the action for the convenience of parties and witnesses and the interests of justice. We first consider the convenience of the parties. “In the Third Circuit, a plaintiffs choice of forum is a paramount concern in deciding a motion to transfer venue. When a plaintiff chooses his home forum, the choice is entitled to greater deference.”
Sandvik,
Here, defendant argues that the operative facts of this lawsuit occurred outside of New Jersey. (Def.’s Br. in Supp. at 5.) (For example, defendant argues that “all evidence and witnesses of infringement and damages are located in Naples, Florida.)” (Id.)
The Court disagrees with defendant’s characterization and we find that plaintiffs choice of forum deserves deference here. Many of the operative facts of this lawsuit occurred within New Jersey. It is well established that “a cause of action for trademark infringement occurs where the passing off occurs.”
Cottman Transmission,
Second, we have considered the convenience of the witnesses. Defendant does not specifically argue that it would be inconvenient for the potential witnesses in this case to travel to New Jersey. Defendant simply states, “[t]he convenience of the parties, and presumably a majority of the witnesses, tips decidedly in favor of transfer to Florida.... [DJefendant Susan D. Weiss, president of defendant ... resides in Naples Florida.” (Def.’s Br. in Supp. at 5.) Defendant does not provide any evidence or argument as to how Weiss would be inconvenienced by litigating this issue in New Jersey. In short, the Court finds that defendant did not meet its burden of proof on this issue.
AT & T,
We have also examined whether the interests of justice will be served by transferring the case to Florida. Defendant argues that the interests of justice will be served because Florida is the locale where its business is located, all of the allegedly infringing products were sold, and all records relating to manufacture and distribution are located. (Def.’s Br. in Supp. at 5.) Nevertheless, defendants contention does nothing but restate what it said in its argument concerning the convenience of parties and witnesses.
Finally, defendant’s argument does not recognize New Jersey’s countervailing interest in protecting One World, a domiciliary corporation, from alleged trademark infringement.
See Zippo,
b. First-filed Rule
Next, defendant argues that the Court should apply the first-filed rule and transfer this action to the Middle District of Florida because Gulf Coast filed its declaratory judgment action in Florida prior to One World’s commencement of its action in this Court. (Def.’s Br. in Supp. at 5-6.) Plaintiff, in opposing the transfer, contends that this Court should decline to apply the first-filed rule in the present case because of bad-faith conduct on the part of Gulf Coast in “racing to the courthouse” in Florida. (Pl.’s Br. in Opp’n at 19.) Plaintiff argue that it notified Gulf Coast via letter dated May 5, 1997' that its use of its NOAH’S ARK mark constituted trademark infringement and federal and common law unfair competition. (Id.) Plaintiff further contends that defendant asked for additional time to respond to the letter, which plaintiffs counsel interpreted as a request to facilitate a settlement of the dispute. (Seidel Aff. I ¶ 3.) Subsequently, Gulf Coast file its action in Florida without providing any notice to One World. This conduct, plaintiff argues, provides this Court with the compelling circumstances necessary to decline to follow the first-filed rule.
In response, defendant argues that it has not engaged in bad faith or forum shopping. (Def.’s Reply Br. at 8.) Gulf Coast contends it did not ever make any representations to One World’s counsel that the extension of time was requested for settlement negotiations. (Id.) Defendant further argues that plaintiffs counsel merely assumed that the extension was requested for settlement negotiations, and that plaintiff has not provided any evidence of active misrepresentation on defendant’s part. (Id.)
The Court agrees that One World has not proven that defendant engaged in deceitful
The first-filed rule was adopted by the Third Circuit in
Kerotest Manufacturing Co. v. C-O-Two Fire Equipment Co.,
[Vjiewing the totality of the circumstances, the district court did not abuse its discretion by declining to dismiss the second-filed suit. The timing of the University’s filing in the District of Columbia indicates an attempt to preempt an imminent subpoena enforcement in the Eastern District of Pennsylvania. When it denied the University’s request to modify the subpoena based on first amendment considerations, the EEOC threatened to institute a subpoena enforcement proceeding within twenty days unless the University responded. Instead of complying with the ruling or notifying the EEOC of its intent to contest the ruling, the University filed suit in the District of Columbia three days before the expiration of the grace period during which the EEOC stated it would not resort to a judicial enforcement proceeding.
Id. at 977. Furthermore, the Third Circuit noted that the University knew that the law in the Third Circuit favored the enforcement of the subpoena. Id. at 978. Under the circumstances, the Court concluded that the purposes of Title VII and he principles underlying the first-filed rule were “better served by rejecting the University’s effort to dismiss the second-filed suit.” Id. at 979.
Compelling circumstances warranting departure from the rule include bad faith on the part of the party who filed suit first to engage in forum shopping.
See id.
(noting that the University knew that Third Circuit law precluded a finding in its favor and filed suit in District of Columbia to avoid adverse law). Another reason justifying departure from the rule exists when the second-filed case has developed more rapidly than the first.
Id.
at 976-77;
Orthmann v. Apple River Campground,
Here, three considerations indicate that departure from the rule is warranted. First, Gulf Coast admits in its brief, as it must that it filed its declaratory judgment action in anticipation of One World’s infringement action in New Jersey. (Defs Reply Br. at 9.) One World’s letter of May 5, 1997 clearly indicated its intention to file suit against Gulf Coast unless Gulf Coast discontinued utilizing its NOAH’S ARK mark.
(See
Seidel Decl., Ex. A.) Furthermore, that letter provided a set time period (15 days) in which One World would refrain from filing suit and allow Gulf Coast to correct the situation.
(Id.)
While there is no evidence that the outcome in Florida district court would be more “favorable” to Gulf Coast in the sense that circuit precedent differed,
see Univ. of Pa.,
Second, the proceedings in this Court have developed to the point where a transfer of venue would be a waste of judicial resources. The parties have filed motions to dismiss in the district court .in Florida and in this Court, and One World also filed an injunctive application here.
See
section D. The Court heard extensive oral argument on both motions and numerous exhibits were received. Furthermore, it appears that the action in Florida has been stayed pending the outcome of these motions. In light of the fact that the first-filed rule has developed in our jurisprudence to avoid duplicative litigation and conserve judicial resources, the facts of this case show that a departure from ■ that rule here best serves those purposes.
See Univ. of Pa.,
The final factor favoring this Court’s retention of this action is that the purposes of the Declaratory Judgment .Act will not be served by a transfer. The purposes of the Declaratory Judgment Act
9
are “to clarify! ] and settl[e] the legal relations at issue” and to “terminate and afford relief from the uncertainty, insecurity, and controversy giving rise to the proceeding.”
Omega Eng’g,
The facts presented here do not indicate, however, that One World has engaged in such conduct. Plaintiff was ready to file its trademark infringement action when plaintiffs counsel sent the May 5, 1997 letter to Gulf Coast. In fact, One World filed its action in this Court on June 6, 1997, only seven days after Gulf Coast filed its action in district court in Florida. Thus, we have considered the purposes of the Declaratory Judgment Act against the backdrop of the timing of the suits here, and agree with plaintiff that the “declaratory judgment action filed by defendant does not spring from circumstances even remotely resembling those contemplated by the Declaratory Judgment Act.” (PL’s Br. in Opp’n at 25);
see also Omega Eng’g,
In light of these considerations, the Court will exercise its discretion and depart from the first-filed rule. Thus, we will proceed to the merits of plaintiffs injunctive application.
D. Injunctive Relief
Plaintiff seeks injunctive relief against defendant under Section 48 of the Lanham Act, 15 U.S.C. § 1125(a) 11 as well as base upon the common law claims of unfair competition and trademark infringement. Plaintiff seeks a preliminary injunction against defendant, arguing that it has satisfied the requirements for he entry of such relief in its favor.
The grant of injunctive relief is an “extraordinary remedy, which should be granted only in limited circumstances.”
Frank’s GMC Truck Ctr., Inc. v. General Motors Corp.,
Plaintiff must first establish a likelihood of success on the merits of its underlying trademark claim. Generally, to win a trademark claim, a plaintiff must establish that: (1) the trademark is valid and legally protectable; (2) the trademark is owned by the plaintiff; and (3) the defendant’s use of the mark is likely to create confusion concerning the origin of the goods or services.
Id.
at 192. These elements apply to both statutory and common law infringement claims.
See Transfer Print Foils v. Transfer Print Am.,
a. Plaintiff Owns a Valid and Legally Protectable Trademark in Its NOAH’S KINGDOM Mark.
The Third Circuit has provided a survey of the relevant law with respect to the ownership rights acquired by the first user of a trademark in
Ford Motor Co. v. Summit Motor Products, Inc.,
If the mark at issue was federally registered and had become “incontestable pursuant to 15 U.S.C. §§ 1058 and 1065, validity, legal protectability, and ownership are proven.” Where a mark has not been federally registered or has not achieved incontestability, validity depends upon proof of secondary meaning, unless the unregistered or contestable mark is “inherently distinctive.”
Id. at 292. The circuit court also defined “inherently distinctive marks,” and provided three classifications:
Distinctive marks include those which are arbitrary, fanciful or suggestive. Arbitrary marks are “those words, symbols, pictures, etc., which are in common linguistic use but which, when used with the goods or services in issue, neither suggest nor describe any ingredient, quality or characteristics of those goods or services.” Fanciful marks “consist of ‘coined’ words which have been invented for the sole purpose of functioning as a trademark.” Marks such as letters, numbered product and container shapes, and designs and pictures may also be classified as “fanciful.” Suggestive marks are virtually indistinguishable from arbitrary marks, but have been defined as marks which suggest a quality or ingredient of goods. The secondary meaning analysis is used for marks which are merely descriptive. A mark is considered descriptive if it describes “the intended purpose, function, or use of the goods; the size of the goods, the class of users of the goods, a desirable characteristic of the goods, or the end effect upon the user.... The characterization of the mark is a factual issue for the jury.”
Id.
at 292 n. 18. With respect to unregistered marks, the court explained, the first party to adopt a trademark can assert ownership rights, provided the applicant continuously uses it in commerce.
Id.
at 292. In the present case, plaintiffs NOAH’S KINGDOM mark is not registered. Thus, it appears that plaintiff must show: (1) that it was the first user; (2) of an inherently distinctive mark; (3) continuously used by plaintiff in commerce.
See id.; see also A.J. Canfield Co. v. Honickman,
In this case, plaintiff argues that it has established protectable and exclusive rights in its NOAH’S KINGDOM mark by virtue of the fact that it is the first to use their inherently distinctive mark in the pet supplies market. (Pl.’s Br. in Supp. at 15.) Despite its claim of inherent distinctiveness, plaintiff does not place its NOAH’S KINGDOM mark into any of the three categories described by the court in
Ford Motor Co.
Plaintiff argues, nevertheless, that “One World’s mark is inherently distinctive under the Supreme Court’s formulation in the
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It appears that, in response, defendant argues that:
[tjhere is no competent evidence of the extent of One World’s use of the Noah’s Kingdom mark since its application was filed. Mr. Katzman’s assertions concerning the extent of usage are called into serious question since Mrs. Weiss consulted all known data bases in the field before adopting the Noah’s Ark mark and never saw any mention of Noah’s Kingdom.
(Def.’s Br. in Opp’n to Pl.’s Mot. for Prel-' im.Inj. at 7 (“Def.’s Br. in Opp’n”).) In her affidavit, Weiss states that she “does not believe the allegations is [sic] paragraphs 3 though [sic] 8 of the Declaration of Mr. Katz-man because I and my company Gulf Coast have been active in the marketplace ... [and] [w]e have never heard of One World or its logotype NOAH’S KINGDOM until ... I received the letter written by One World’s attorney-” (Weiss Aff. II ¶ 3.) It appears that defendant does not, however, argue that plaintiff was not the first user of the product; nor does defendant argue that plaintiffs NOAH’S KINGDOM mark is not “inherently distinctive.”
The Court finds that plaintiff has met its burden of showing that One World was the first user of its NOAH’S KINGDOM mark in commerce. It is undisputed that plaintiff filed its intent-to-use trademark application in the PTO on January 2, 1996. (See Katz-man Decl. II, Ex. 1 (One World’s trademark app.)). Furthermore, on December 16, 1996, Mr. Katzman signed an Amendment to M-lege Use Declaration, which was filed in the PTO on December 16, 1996. In this document, Mr. Katzman stated that One World began actual usage of its NOAH’S KINGDOM mark on pet products as early as February 23, 1996, and also used its mark on other related pet goods as early as May 1996. (See id., Ex. 2.) Aso, the most recent office action, as indicated in the file wrapper of Gulf Coast’s application in the PTO, reveals that defendants’ trademark application was placed under suspension, pending the registration of plaintiffs mark. (Seidel Decl. II, Ex. 3.) Moreover, several of the exhibits submitted by plaintiff at oral argument show advertisements bearing plaintiffs mark dating from mid-1996 through 1997. (See, e.g., Pl.’s Ex. 6 (magazine entitled Bird Talk, at 67-69 (June 1996)); Pl.’s Ex. 5 (magazine entitled Caged Bird Hobbyist, at 23 (August 1996)); Pl .’s Ex. 2 (magazine entitled Natural Pet, at 43 (October 1996); Pl.’s Ex. 3 (magazine entitled Natural Pet, at 41 (December 1996)); Pl.’s Ex. 9 (magazine entitled Finch & Canary World, at back cover (Vol. 2, No. 3 1997)).
The Court also finds that One World has provided sufficient evidence at this juncture that its NOAH’S KINGDOM mark is inherently distinctive.
12
While plaintiff does not argue specifically that its mark is arbitrary, fanciful, or suggestive, it points out that its mark was accepted by the PTO without proof of secondary meaning. (Pl.’s Reply Br. at 3; Seidel Decl. Ill, Ex. A.) This omission in the PTO’s Final Action letter provides a sufficient basis at this juncture to conclude that there is likelihood of success on this aspect of plaintiffs infringement claim.
See Securacomm Consulting, Inc. v. Securacom Inc.,
Finally, the Court finds that One World has demonstrated, at this stage of this case,
b. Defendant’s Use of its NOAH’S ARK Mark is Likely to Came Confusion
The court in
Fisons Horticulture, Inc. v. Vigoro Indust., Inc.,
[T]he likelihood of confusion ... exists when the consumers viewing the ■ mark would probably assume that the product or service it represents is associated with the source of a different product' or service identified by a similar mark. Proof of actual confusion is not necessary; likelihood of confusion is all that need be shown_Once a trademark owner demonstrates the likelihood of confusion, it is entitled to injunctive relief.
Id.
Where plaintiff and defendant deal directly in competing goods, the court need rarely look beyond the mark itself.
Id.
at 472;
Interpace Corp. v. Lapp, Inc.
In cases where defendant and plaintiff deal in non-competing lines of goods or services, the court must look beyond the trademark itself. The Third Circuit has adopted a ten-factor test to determine likelihood of confusion in a non-competing products situation. The factors are:
(1) the degree of similarity between the owner’s mark and the alleged infringing mark; (2). the strength of the owner’s mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time the defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties’ sales efforts are the same; (9) the relationship of the goods in the minds of consumers because of the similarity of function; and (10) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant’s market, or that he is likely to expand into that market.
Fisons,
Defendant contends that there is no likelihood of confusion between the two marks. In particular, defendant argues that: (1) there is no proof that anyone has been confused or is likely to be confused; (2) the logos for NOAH’S ARK and NOAH’S KINGDOM are very different; and (3) the products distributed under the logos are different. (Def.’s Br. in Opp’n at 7.)
In response, plaintiff essentially contends that: (1) proof of actual confusion is not necessary to establish likelihood of confusion in a trademark infringement suit (Pl.’s Reply Br. at 2); (2) defendant has “appropriated the dominant portion of plaintiffs mark, as well as a virtual duplicate of One World’s Logo” (Pl.’s Br. in Supp. at 18); and (3) the goods sold under the parties’ respective logos are “identical.” (Id.)
Plaintiff begins its argument with the premise that because the parties deal in competing goods, the court need not look further than the competing NOAH’S KINGDOM and NOAH’S ARK marks.
(Id.)
In other words,
Application of the first factor requires the Court to determine the degree of similarity of the two marks. The Third Circuit has instructed that in analyzing the appearance of the products, courts should focus upon “the overall impression created by the marks.”
Fisons,
The second factor to consider is the strength of plaintiffs mark. Application of this factor also supports plaintiffs position. We have already determined that plaintiff has a likelihood of success in establishing that its NOAH’S KINGDOM mark is inherently distinctive. Inherently distinctive marks are entitled to a broad scope of judicial protection from infringement. Accordingly, the Court finds that plaintiffs mark is “strong.”
See
J. Thomas McCarthy,
McCarthy on Trademarks,
§ 11.4 (1995);
see also Fisons,
The fifth factor to consider is the intent of the defendant in a opting the mark. The relevant inquiry is whether defendant adopted its mark with the intent of obtaining unfair commercial advantage from plaintiffs reputation.
Taj Mahal Enterprises, Ltd. v. Trump,
In the present case, defendant states that it never heard of One World or its logotype NOAH’S KINGDOM until May 5, 1997 when Weiss received a letter from One World. {See Weiss Aff. II ¶ 3.) In her affidavit, Weiss also contends that she conducted a thorough search of every major trade publication and trade organization in which products such as those of the parties would be listed and did not discover any mention of plaintiffs NOAH’S KINGDOM label or its pet products. Further, she states that she did not see any advertisements in any of the foremost magazines in the industry. Two magazines mentioned by Weiss in this connection were Pet Business and Natural Pet. (Def.’s Br. in Opp’n at 7; See Weiss Aff. II ¶ 4-5.)
Application of this factor also weighs in plaintiffs favor. Despite defendant’s declarations, plaintiff provided several exhibits at oral argument which showed that it adver
The seventh factor asks whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media.
Fisons,
The eighth factor examines the extent to which the targets of the parties’ sales efforts are the same.
Fisons,
The ninth factor requires the Court to determine the relationship of the goods in the minds of the consumers because of the similarity of function. The Third Circuit stated that the test is whether the goods at issue “are similar enough that a consumer could assume they were offered by the same source.”
Fisons,
In short, we have considered, weighed, and applied the ten factors set out in Fisons and Lapp for determining the likelihood of confusion, and conclude that the balance of the factors favors a finding for the plaintiff. 15 Thus, plaintiff has established a reasonable probability of success on the merits of its trademark infringement claims.
2. Plaintiff Will Suffer Irreparable Harm
The second element that One World must establish to succeed in its injunctive application is that it will suffer irreparable harm if an injunction is not issued.
Opticians,
In the Third Circuit, grounds for finding irreparable injury include loss of control of reputation, loss of trade and loss of goodwill. In Opticians, the Third Circuit summarized the damage inherent in trademark infringement cases as follows:
In Ambassador East Inc. v. Orsatti, Inc.,257 F.2d 79 (3d Cir.1958), we held that a plaintiffs “mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he borrows the owner’s reputation, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use”....
Opticians,
In the present case, we have found that plaintiff established a reasonable probability of success on its claim that defendant’s use of its NOAH’S'ARK mark was likely to cause confusion in the relevant market. See section 11(D)(1)(b). Based upon this finding, the Court has no doubt that Gulf Coast’s use of its NOAH’S ARK mark has inhibited plaintiffs ability to control its own NOAH’S KINGDOM mark. This in turn creates the potential for damage to One World’s reputation, which constitutes irreparable injury. Furthermore, the fact that Gulf Coast participates in trade shows and sought to participate in the Backer Trade Show-to “continue to expose [the] NOAH’S ARK name and logotype to those in the pet products industry and ... to sign up one or two additional distributors” is evidence that the harm to plaintiff’s reputation and goodwill is immediate. (Weiss Aff. II ¶ 9.)
3. Ham to Defendant
Next, the Court -must consider the harm to defendant if a preliminary injunction were issued, and balance that harm against plaintiffs alleged injury. Here, the Court finds that such analysis favors plaintiff.
While the evidence shows that defendant has spent substantial sums of money on its NOAH’S ARK products, this fact does not tip the balance of the hardships in its favor.
See Transfer Print,
4. The Public Interest
The final consideration in the decision whether to grant injunctive relief is the public interest. As the Court in Transfer Print noted: “[t]he public is entitled to rely on valid mark’s as identifying the products it has come to associate with that mark.... [T]he public is entitled to not be confused or deceived by improperly appropriated marks.” Id. Here, the public interest lies primarily, consistent with the intent of the Lanham Act, in protecting the senior user’s mark.
III. CONCLUSION
After reviewing the parties’ submissions and hearing oral argument, the Court finds that: (1) defendant is subject to personal jurisdiction in this district and (2) a transfer of venue is inappropriate. The Court also finds that plaintiff has satisfied the requirements set forth in Opticians such that its injunctive application should be granted.
For the reasons stated, defendant’s motion to dismiss or to transfer venue will be denied. Further, plaintiffs motion for a preliminary injunction will be granted. Plaintiff shall submit an appropriate form of Order, including specification of security sufficient to meet the requirement of Fed.R.Civ.P. 65(c). Defendant shall have five days from receipt of said proposed Order to respond in writing with objections, if any, to the form of the Order and the amount of the security set forth therein. Thereafter, an appropriate Order will be entered in the Court’s discretion. If any changes are to be made to the proposed form of Order, the Court will confer with the parties before entering the Order.
Notes
. Mr. Katzman, President of One World, submitted two declarations to the Court. The first declaration, dated August 1, 1997, was filed in opposition to Gulf Coast's motion to dismiss. The second declaration, dated September 18, 1997, was filed in support of plaintiff's application for injunctive relief. The first declaration will be referred to as "Katzman Decl. I.” Likewise, the second declaration will be referred to as "Katzman Decl. II."
. Mr. Seidel, counsel for One World, submitted three declarations to the court. The first declaration, dated August 1, 1997, was filed in opposition to Gulf Coast’s motion to dismiss. The second and third declarations, dated September 18, 1997 and September 22, 1997, respectively, were filed in support of One World’s application for injunctive relief. The first declaration will be referred to as "Seidel Decl. I.” Likewise, the second and third declarations will be referred to as "Seidel Decl. II” and "Seidel Decl. III."
.One World’s sales of its NOAH’S KINGDOM pet products have reached approximately $ 170,-000. (Katzman Deck, II ¶ 6.) In addition, One World has expended the following amounts on the promotion of its NOAH’S KINGDOM pet products: (1) $83,000 for general advertising; (2) $5,000 for mailings; and (3) $10,000 for display at various trade shows. (Id.) At present, One World is expanding the sales and distribution of its NOAH’S KINGDOM products throughout the United States. (Id. ¶¶ 13-22.)
. Ms. Weiss, President of Gulf Coast, submitted two affidavits to the Court. The first affidavit, dated June 25, 1997, was filed in support of Gulf Coast's motion to dismiss. The second affidavit, dated September 30, 1997, was submitted in opposition to One World’s injunctive application. The first affidavit will be referred to as “Weiss Aff. I.” Similarly, the second affidavit will be referred to as “Weiss Aff. II.”
. It does not appear that plaintiff argues that this Court has general jurisdiction over Gulf Coast.
. Defendant provides arguments to the contrary that are unpersuasive. Defendant cites the Supreme Court's decision in
World-Wide Volkswagen Corp. v. Woodson,
Defendant also contends that "no proof has been submitted by the plaintiff that any goods were ultimately bought by New Jersey residents or that the catalog [offered by the New Jersey buyer] was targeting New Jersey Consumers." (Def.'s Reply Br. at 7.) Thus, defendant argues, "it cannot be said that Gulf Coast ‘purposefully directed’ any activities toward New Jersey.” (Id.) Defendant fails to recognize, however, that by shipping its NOAH’S ARK products to the New Jersey distributor, that conduct in and of itself constitutes "purposeful availment” of the forum’s market.
. It appears that Seidel assumed that the request was for negotiations. (Seidel Decl. ¶ 3.; Decl. of Merrill N. Johnson in Supp. of Def.'s Mot. to Dismiss or Transfer ¶ 3 (" 'I assumed that this request [for an extension of time] was for negotiations .... I permitted Gulf Coast to an extension of time until June 7, 1997 to respond under the impression that the extension was for the purpose of negotiation only.' ") (quoting Seidel Decl. I).) Seidel does not state in his declaration that this assumption stemmed from any conduct by or discussions with Gulf Coast. (See generally id.) Thus, it does not appear from the evidence presented that Gulf Coast did in fact seek to mislead One World into believing that the extension of time to answer was in hopes of a settlement of the underlying trademark infringement dispute.
. As previously stated, we do not find that Gulf Coast utilized tactics to delay the institution of One World’s suit. Nor have we found that Gulf Coast actively deceived plaintiff to provide it with additional time to respond to plaintiff's May 5, 1997 demand letter. Nevertheless, that conclusion does not preclude us from also finding that defendant instituted its declaratory judgment action as a result of Seidel's notice of his intent to file suit on behalf of One World.
. 28 U.S.C. § 2201 provides:
In a case of actual controversy within its jurisdiction, [with certain exceptions], any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration....
Id.
. The holding in
Omega Engineering
was limited by the Federal Circuit's decision in
Genentech.
In
Omega Engineering,
the Seventh Circuit held that the district court did not abuse its discretion in declining to hear a first-filed declaratory judgment action where a suit for trademark infringement was filed four days later in another district.
Omega Eng'g,
One World cites
Omega Engineering
in support of its argument that defendant’s declaratory action is inconsistent with purposes of Declaratory Judgment Act. (Pl.’s Br. in Opp’n at 27-28.) While
Genentech
failed to adopt the Seventh Circuit's approach in the patent infringement action before that court, the court’s reluctance stemmed from the fact that the Federal Circuit has a special obligation to promote national uniformity in patent cases.
Genentech,
. Section 1125 provides in pertinent part:
(a)(1) Any person who, on or in connection with any goods or services ... uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person ... shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125.
. It is worth noting here the fact that defendant did not contest plaintiffs characterization, nor argue that plaintiff was required to prove secondary meaning to meet this element of its trademark infringement claim. Thus, at this juncture, the Court will not deny plaintiff’s injunctive application on this basis.
. Furthermore, there is evidence in the record of defendant's carelessness. Based upon the similarity of the marks
(see
discussion of factor 1, supra), it is very likely that a- normal search in the PTO records would have revealed plaintiff’s pending application filed seven and one-half months before defendant was incorporated and adopted its mark. Such carelessness also weighs in favor of granting plaintiff's injunctive application.
See Chips N. Twigs, Inc. v. Chip-Chip, Ltd.,
. One World apparently sells "whole life-cycle multi-supplements, anti-oxidants, shampoos, conditioners, first-aid ointments, ear washes, and acidophilus for cats and dogs” under its NOAH'S KINGDOM mark. (Katzman Deck II at ¶ 4.) Gulf Coast sells “whole food supplements and holistic pet care products for cats and dogs.” (Weiss Aff. II ¶ 7.)
. The Court notes that plaintiff does not present any argument with respect to factors three, four, six or ten. Nevertheless, such omission does not prevent plaintiff from prevailing in this case. We have examined and applied all ten factors and determined that the sum of them weighs in favor of plaintiff. This is sufficient to support a finding ' for plaintiff.
See Fisons,
In light of the Court's obligation to consider each factor in reaching its conclusion as to the likelihood of confusion, one of defendant's arguments merits brief discussion. Defendant makes an argument with respect to factor six — namely that plaintiff has not presented any evidence of actual confusion. (Def.’s Br. in Opp'n at 7.) While evidence of actual confusion is one factor for the court to consider in its analysis, proof of actual confusion is not necessary to establish a likelihood of confusion in a trademark infringement suit.
See Opticians,