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American Dairy Queen Corp. v. W.B. Mason Co., Inc.

United States District Court, D. Minnesota

January 8, 2019

American Dairy Queen Corporation, Plaintiff,
v.
W.B. Mason Co., Inc., Defendant.

          Dean Engler and Molly Littman, and Sheldon Klein, for Plaintiff.

          Jason Kravitz, and Thomas Johnson, for Defendant.

          MEMORANDUM OPINION AND ORDER

          SUSAN RICHARD NELSON, UNITED STATES DISTRICT JUDGE

         Defendant, W.B. Mason Co., Inc. (“W.B. Mason”) moves to dismiss this action for lack of personal jurisdiction and improper venue or, in the alternative to transfer the case to the District of Massachusetts. Plaintiff American Dairy Queen Corporation (“Dairy Queen”) responds that the Eighth Circuit's decision in Knowlton v. Allied Van Lines, 900 F.2d 1196 (8th Cir. 1990) precludes dismissal and there are no circumstances that warrant transfer. Because the Court finds that Knowlton controls this case and there are no circumstances that warrant transfer, it denies W.B. Mason's motion.

         I. Factual and Procedural Background

         Over the years, Dairy Queen has become famous for its popular soft serve ice cream blended with fruit, nuts, or candy, aptly named “the Blizzard.” (Compl. [Doc. No. 1] ¶ 6.) Emblazoned on every Blizzard is a graphic image of the word “Blizzard” in blue, surrounded by a red border and white icicles. (Id. ¶ 7.) This mark is the subject of five valid registrations at the U.S. Patent and Trademark Office, the first of which was issued to Dairy Queen over thirty years ago. (Id. ¶ 8.)

         In recent years, it appears that W.B. Mason expanded beyond its office furniture and supplies business to food, snack, and beverage items. (Id. ¶ 29.) It now sells BLIZZARD brand spring water and distilled water nationally. (Id. ¶ 33.) The bottle's logo is similarly red, white, and blue, although differently configured. (Id.)

         To support its use of the term BLIZZARD, W.B. Mason filed two federal trademark applications in 2016: 1) BLIZZARD SPRING WATER (Serial No. 87210712) and 2) WHO BUT W.B. MASON'S BLIZZARD SPRING WATER (Serial No. 87210633). Dairy Queen promptly filed an opposition with the Trademark Trial and Appeal Board opposing the registration of both marks arguing that they are likely to cause confusion and are likely to dilute Dairy Queen's BLIZZARD mark. (Id. ¶ 36-38.) Unable to resolve their differences, Dairy Queen filed this lawsuit on March 12, 2018. In response, W.B. Mason filed a declaratory judgment action in the District of Massachusetts three days later, on March 15, 2018. In its suit, Dairy Queen accuses W.B. Mason of trademark infringement, trademark dilution, deceptive trade practices, and both statutory and common law unfair competition.[1] (Id. ¶ 41-69.)

         In this motion, W.B. Mason challenges this Court's personal jurisdiction and venue pursuant to Federal Rules of Civil Procedure 12(b)(2) and 12(b)(3). (Def.'s Mot. to Dismiss [Doc. No. 12] at 2.) Dairy Queen is a Delaware corporation with its principal place of business in Minnesota, while W.B. Mason is a Massachusetts corporation with its principal place of business in Massachusetts. (Compl. ¶¶ 1, 2.)

         Dairy Queen alleges that W.B. Mason is registered as a corporation under Minn. Stat. § 303, which bestows upon foreign corporations the same burdens and benefits as domestic corporations and that its registration is current. (Compl. ¶ 4); Ally Bank v. Lenox Financial Mortgage Corp., Civ. No. 16-2387, 2017 WL 830391, at *2-3 (D. Minn. Mar. 2, 2017); (Id. at ¶ 4 (citing Minn. Stat. § 303).) Dairy Queen further alleges that W.B. Mason has held the requisite certificate of authority and has maintained a registered agent for service of process in Minnesota since 2014. (Compl. ¶ 4.) Accordingly, Dairy Queen argues that, by maintaining its Minn. Stat. § 303 filing and designating a registered agent, WB. Mason has consented to the general personal jurisdiction of the court. (Compl. ¶ 4); Knowlton, 900 F.2d at 1199.

         W.B. Mason responds that a more restrictive interpretation of Minn. Stat. § 303 is needed in light of the Supreme Court's post-Knowlton decisions in Goodyear Dunlop Tires Ops., S.A. v. Brown, 564 U.S. 915 (2011) and Daimler AG v. Bauman, 134 S.Ct. 746 (2014). (Def.'s Reply Br. at 11.) W.B. Mason urges the Court to hold that a party's registration under Minn. Stat. § 303 does not imply, without more, its consent to general personal jurisdiction in Minnesota. (Id. at 10.)

         In its motion, W.B. Mason also argues that the Court cannot exercise specific personal jurisdiction over it. (Id. at 17.) W.B. Mason argues that because the sale of BLIZZARD water has no connection to Minnesota, there is not a strong enough connection between the forum and the underlying controversy for this Court to exercise specific personal jurisdiction over it. (Def.'s Mot. to Dismiss at 9.) First, W.B. Mason asserts that it has not sold any of its BLIZZARD water in Minnesota. (Id. at 10.) Second, W.B. Mason claims that it has not “uniquely or expressly” marketed its products, including BLIZZARD water, to Minnesota customers. (Id. at 11.) And lastly, W.B. Mason contends that Dairy Queen's injury is “insufficient on its own to establish specific personal jurisdiction.” (Id.)

         II. Analysis

         A. Standard of Review

         To survive a motion to dismiss for lack of personal jurisdiction, “a plaintiff must make a prima facie showing that personal jurisdiction exists, which is accomplished by pleading sufficient facts to support a reasonable inference that the defendant can be subjected to jurisdiction within the state.” K-V Pharm. Co. v. J. Uriach & CIA, S.A., 648 F.3d 588, 591-92 (8th Cir. 2011) (citation and alterations omitted). This evidentiary standard is “minimal, ” although the pleadings may be “tested” with affidavits and exhibits supporting and opposing a Rule 12(b)(2) motion to dismiss. Id. at 592. A court must resolve all factual conflicts in the plaintiff's favor. Fastpath, Inc. v. Arbela Techs. Corp., 760 F.3d 816, 820 (8th Cir. 2014). “[T]he action should not be dismissed for lack of jurisdiction if the evidence, viewed in the light most favorable to [the plaintiff], is sufficient to support a conclusion that the exercise of personal jurisdiction over [the defendant] is proper.” Creative Calling Sols., Inc. v. LF Beauty Ltd., 799 F.3d 975, 979 (8th Cir. 2015).

         B. The Law of General ...


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