United States District Court, D. Minnesota
Scott Johnston and Anthony Zeuli for Plaintiff.
Marko Zoretic and Katherine Rahlin for Defendant.
REPORT AND RECOMMENDATION
FRANKLIN L. NOEL, Magistrate Judge.
THIS MATTER came before the undersigned United States Magistrate Judge on April 17, 2015, on Defendant's motion to transfer venue (ECF No. 19). The matter was referred to the undersigned for Report and Recommendation pursuant to 28 U.S.C. § 636 and Local Rule 72.1. Order, ECF No. 27. For the reasons set forth below, the Court recommends that Defendant's motion be DENIED.
I. FINDINGS OF FACT
A. Procedural Background
On June 21, 2010, Plaintiff The Toro Company ("Toro") filed United States Trademark Application Serial No. 85/067, 325 (the "325 Application") for the mark PRECISION. Am. Compl. ¶ 15, ECF No. 17. The goods in the 325 Application are "irrigation equipment and components, namely, spray nozzles, rotating nozzles and soil moisture sensors for irrigating landscapes, lawns and gardens." Id. ¶ 25. Defendant Hunter Industries, Inc. ("Hunter") opposed Toro's 325 Application and petitioned the U.S. Patent and Trademark Office to reject the 325 Application (Opposition No. 91-203, 612). Id. ¶ 17. By order dated March 31, 2014 (the "Order"), the Trademark Trial and Appeal Board ("TTAB") denied a federal trademark registration for the mark PRECISION on the grounds that the trademark was likely to cause confusion with Hunter's PRECISION DISTRIBUTION CONTROL mark under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Id. ¶¶ 5, 18. The TTAB subsequently denied Toro's request for reconsideration of the Order on August 29, 2014. Id. ¶ 20.
The present action is an appeal of the TTAB's decision pursuant to 15 U.S.C. § 1071(b)(1). Through this appeal, Toro seeks (1) to reverse the decision of the TTAB that denied registration of Toro's PRECISION mark; and (2) a declaratory judgment that Toro's PRECISION mark does not, and will not, create a likelihood of confusion with Hunter's PRECISION DISTRIBUTION CONTROL. Id. ¶¶ 1, 4, 50-57.
Hunter filed its Answer on February 17, 2015, asserting the following counterclaims against Toro: (1) false designation of origin under 15 U.S.C. § 1125(a); (2) California common law trademark infringement; (3) California statutory unfair competition under the California Business and Professions Code § 17200; and (4) California common law unfair competition. Answer and Countercls. ¶¶ 33-54, ECF No. 18. Hunter now moves to transfer this action from the United States District Court, District of Minnesota to the United States District Court for the Central District of California pursuant to 28 U.S.C. § 1404(a). See Mot. to Transfer, ECF No. 19.
B. The Parties
Hunter has been headquartered in San Marcos, California since 1981. Smith Decl. ¶ 3, ECF No. 23. Hunter and Toro are long-time competitors in the irrigation products market. Id. ¶ 5. Hunter has sold its PRECISION DISTRIBUTION CONTROL irrigation sprinklers to its distributor customers across the Unites States since 1992. Id. ¶ 6. These distributers have in turn sold these products to retailers, landscape contractors, golf courses, cities, schools, and other government entities. Id. There are approximately seventy such distributor branches located in the Central District of California (230 statewide), and nine located in Minnesota. Id. Hunter employs four sales employees in the Central District of California (12 statewide), while only one is employed in Minnesota. Id. ¶¶ 7, 8.
Toro's corporate headquarters has been located in Bloomington, Minnesota since 1914. Brown Decl. ¶ 3, ECF No. 32. In addition to its operations in Minnesota, Toro operates facilities in California, Florida, Nebraska, New Jersey, Texas, and Wisconsin. Id. ¶ 4. According to Toro, employees who design, promote, and sell products or services bearing the PRECISION trademark are located in both California and Minnesota. Id. ¶¶ 5, 7.
II. CONCLUSIONS ...