United States District Court, D. Minnesota
Engler and Molly Littman, and Sheldon Klein, for Plaintiff.
Kravitz, and Thomas Johnson, for Defendant.
MEMORANDUM OPINION AND ORDER
RICHARD NELSON, UNITED STATES DISTRICT JUDGE
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.
Factual and Procedural Background
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.)
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.
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. (Id. ¶ 41-69.)
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.)
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.
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.)
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
Standard of Review
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.
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