USDC IN/ND case 2:22-cv-00080-PPS-JEM document 20 filed 05/28/22 page 1 of 19

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF INDIANA
HAMMOND DIVISION

CORRECTED

NUSTAR ENTERPRISES LLC, )

)
Plaintiff, )
v. )
) Case No.: 2:22-cv-00080-PPS-JEM
RELOADED MERCH LLC, and )
BILL OMAR CARRASQUILLO, )
)
Defendants. )

DEFENDANTS’ MEMORANDUM IN SUPPORT OF

MOTION TO DISMISS OR TRANSFER VENUE

Robert R. Axenfeld
AXENFELD LAW GROUP, LLC
2001 Market St. – Suite 2500
Philadelphia, PA 19103
USDC IN/ND case 2:22-cv-00080-PPS-JEM document 20 filed 05/28/22 page 2 of 19

TABLE OF CONTENTS

TABLE OF AUTHORITIES .............................................................................................. ii

I. PRELIMINARY STATEMENT ...................................................................................... 1

II. FACTUAL BACKGROUND ........................................................................................ 2

III. PLAINTIFF’S COMPLAINT SHOULD BE DISMISSED DUE TO LACK OF

PERSONAL JURISDICTION .......................................................................................... 3
A. It is Plaintiff’s Burden to Establish the Existence of Personal Jurisdiction ........ 3

B. Defendants Are Not Subject to General Personal Jurisdiction ........................ 5

C. Defendants Are Not Subject to Specific Jurisdiction in Indiana. ....................... 6

IV. VENUE IN THIS DISTRICT IS IMPROPER ............................................................... 8

A. Federal Rule of Civil Procedure 12(b)(3) .......................................................... 8

B. Plaintiff fails to allege sufficient facts to establish that venue is proper ............ 9

V. IN THE ALTERNATIVE, THIS COURT SHOULD TRANSFER THIS CASE TO THE

DISTRICT OF NEW JERSEY ....................................................................................... 11

VI. IN THE ALTERNATIVE, THE COURT SHOULD DECLINE SUPPLEMENTAL

JURISDICTION OVER PLAINTIFF’S PENNSYLVANIA AND NEW JERSEY STATE
LAW CLAIMS………………………………………………………….………..……………..13

VI. CONCLUSION………………………….……..…………………………………..…..…..14
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TABLE OF AUTHORITIES
CASES Page(s)

Advanced Tactical Sys. v. Real Action Paintball, 751 F.3d 796 (7th Cir. 2014) .……...….7
Anthem Ins. Cos. v. Tenet Healthcare Corp., 730 N.E.2d 1227 (Ind. 2000) .......…..…4, 5
Bowden v. Agnew, 2 N.E.3d 743 (Ind. Ct. App. 2014) ....………………………….……….8
Burger King Corp. v. Rudzewicz, 471 US 462 (1985) ...………………………...………….6
Carnegie-Mellon Univ. v. Cohill, 484 U.S. 343 (1988) ....…..………………………..…....13
Calder v. Jones, 465 U.S. 783 (1984)…………………………………………………………6
Collazo v. Enterprise Holdings, Inc., 823 F. Supp.2d 865 (N.D. Ind. 2011) ….………....11
Cushing v. City of Chicago, 3 F.3d 1156 (7th Cir.1993) ...…………………………...………4
Detroit Coffee Co., LLC v. Soup for You, LLC, No. 16-CV-9875,
2018 WL 941747 (S.D.N.Y. Feb. 16, 2018)…………………………………………10
Dole Food Co., Inc. v. Watts, 303 F.3d 1104 (9th Cir. 2002) .………………………..….…6
Elayyan et. al. v. Sol Melia, SA et. al., 571 F. Supp.2d 886 (N.D. Ind. 2008)………..……...8
Family Watchdog LLC v. Schweiss et. al., 2009 WL 276856 (S.D. Ind. 2009)……….……7
Felland v. Clifton, 682 F.3d 665 (7th Cir. 2012)………………………………………………6
Hafner v. Lutheran Church-Missouri Synod, 616 F. Supp. 735 (N.D. Ind. 1985)…………8
Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408 (1984)…...……...……8
Hubbard Mfg. Co., Inc. v. Greeson, 515 N.E.2d 1071 (Ind. 1987) ...……………….……..9
Huffman v. Hains, 865 F.2d 920 (7th Cir. 1989) ...……………………..…….…………….14
Int'l Adm'rs v. Pettigrew, 430 F. Supp. 2d 890 (S.D. Iowa 2006)………………..…….……..8
Int’l Steel Co. v. Charter Buildings, Inc. 585 F. Supp. 816 (S.D. Ind. 1984) ………………..4
In re Acer Am. Corp., 626 F.3d 1252 (Fed. Cir. 2010) ……………………….…...……….12
In re Genentech, 566 F.3d 1338 (Fed. Cir. 2009) ...………………………………………...12
J.B. Custom, Inc. v. Rossi, No. 1:10-cv-326, 2011 WL 124509
(N.D. Ind. Jan. 13, 2011)………………………………………………………………10
Johnson Worldwide Assocs., Inc. v. Brunton Co, 12 F. Supp. 2d 901
(E.D. Wis. 1998)……………………………………………………………………..…..4
Keesling v. Winstead, 858 N.E.2d 996 (Ct. App. Ind. 2006)…………………………..........8

ii
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Lexington Ins. Co. v. Hotai Ins. Co., Ltd., 938 F.3d 874 (7th Cir. 2019) …………...……10
L.H. Carbide Corp. v. Piece Maker Co., 852 F. Supp. 1425 (N.D. Ind. 1994)...................5
Nerds on Call, Inc. v. Nerds on Call, Inc., 598 F. Supp.2d 913 (S.D. Ind. 2008) ..............7
Price v. Tolbert, No. 2:20-cv-00500-JMS-MJD, 2022 WL1204803
(S.D. Ind. Apr. 22, 2022) ………………………………………………….…............14
Purdue Research Found. v. Sanofi-Synthelabo, S.A., 338 F.3d 773 (7th Cir. 2003)....3, 5
RAR, Inc. v. Turner Diesel, Ltd., 107 F.3d 1272 (7th Cir. 1997) .......................................3
Ryan v. Chayes Virginia, Inc., 553 N.E.2d 1237 (Ind. Ct. App. 1990) ..............................8
Search Force, Inc. v. Dataforce International, Inc., 112 F. Supp.2d 771
(S.D. Ind. 2000)………………………………………………………………..………...4
Sundance Botanicals, LLC v. The Power of Elderberries, LLC, No.
2:20-CV-141-PPS-JPK, 2020 WL 56445214 (N.D. Ind. September 21, 2020) .....7
United States v. Martinez De Ortiz, 910 F.2d 376 (7th Cir.1990) ......................................4
Vera Bradley Designs, Inc. v. Denny, Cause No. 1:18-CV-70-TLS,
2018 WL 3633986 (N.D. Ind. July 30, 2018)….....................................................10
Wheel Pros, LLC v. Performance Tire, No. 17-cv-0042, 2017 WL 6017292
(C.D. Cal. Apr. 24, 2017) .....................................................................................12
Wild v. Subscription Plus, Inc., 292 F.3d 526 (7th Cir. 2002) ….......................................11
Statutes
28 U.S.C § 1367…..........................................................................................................13
28 U.S.C. § 1391 .............................................................................................................9
28 U.S.C. § 1404(a) .......................................................................................................11
28 U.S.C. § 1406(a) .......................................................................................................11
54 Pa. Cons. Stat. Ann. § 1……..………………………………………………..................13
N.J. Stat. § 56:3-13.16 ...................................................................................................13
Rules
Fed. R. Civ. P. 12(b)(2) ................................................................................................3, 7
Fed. R. Civ. P. 12(b)(3) ................................................................................................6, 8

iii
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I. PRELIMINARY STATEMENT

Defendants Reloaded Merch LLC (“Reloaded”) and Bill Omar Carrasquillo

(“Carrasquillo”) seek dismissal of this action due to this Court's lack of personal

jurisdiction over them, and lack of proper venue in this district. Alternatively, defendants

request that the Court transfer the case to the District of New Jersey.

In attempting to bring an individual New Jersey resident and a Pennsylvania

limited liability company into the Northern District of Indiana, plaintiff relies exclusively

on impermissible conclusory assertions instead of required factual allegations. Plaintiff

presumably did so because it could not assert facts that would establish personal

jurisdiction or venue in this Court.

Neither Reloaded nor Carrasquillo have any contacts with Indiana; they conduct

their activities exclusively in New Jersey and Pennsylvania. Apart from roughly .1% of

orders (10 transactions out of almost 10,000) that randomly came from this district,

defendants have no activities that could be connected with this district. They do not

advertise in, market to, solicit business from, or otherwise target Indiana. Thus, this

Court lacks personal jurisdiction over defendants, and venue is improper.

Even if venue had been proper, it would be much more appropriate in the District

of New Jersey, where defendants reside and operate, and where plaintiff alleges it

maintains state-law trademark rights. Finally, even if the action were to remain in this

district, the Court should decline to exercise supplemental jurisdiction over the

Pennsylvania and New Jersey state law claims.

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II. FACTUAL BACKGROUND

Plaintiff does not allege any factual allegations to support either personal

jurisdiction or venue. Plaintiff’s sole allegations that relate to personal jurisdiction

(Complaint [ECF No. 1] ¶ 5) and venue (Complaint ¶ 7) are a paragon of boilerplate,

conclusory assertions. Absent sufficient allegations to show minimum contacts with

Indiana and that a substantial part of the events giving rise to plaintiff’s claims occurred

in this district, the Complaint should be dismissed.

Reloaded is a Pennsylvania limited liability company. Declaration of Bill Omar

Carrasquillo (“Carrasquillo Dec.”) ¶ 2; Complaint ¶ 2. Reloaded’s headquarters and

principal place of business is and has always been in Pennsylvania. Carrasquillo Dec.

¶ 3. Reloaded performs all of its work in Pennsylvania and New Jersey only. Id.

Neither Reloaded nor Carrasquillo conduct business in Indiana. Id. ¶ 5. Reloaded

is not licensed to do business in Indiana, does not have a place of business in Indiana,

and does not have any members, employees, or contractors who live or work in Indiana.

Id. ¶¶ 5-6. Rather, all of Reloaded’s workers work and reside in New Jersey or

Pennsylvania. Id. ¶ 7. Carrasquillo resides in New Jersey. Id. ¶ 1; Complaint ¶ 3.

Neither Reloaded nor Carrasquillo own or rent property in Indiana, have any bank

accounts in Indiana, nor pay Indiana taxes. Carrasquillo Dec. ¶ 9.

Carrasquillo has never been to Indiana, and no Reloaded member, employee, or

contractor has ever been to Indiana on behalf of Reloaded. Id. ¶ 4. Reloaded has never

targeted business towards Indiana nor has advertised or marketed Reloaded’s business

in Indiana, nor otherwise solicited business in Indiana. Id. ¶ 10.

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While plaintiff alleges that it registered state-law trademarks in New Jersey and

Pennsylvania, it did not allege registering any trademark in Indiana. Complaint ¶¶ 12-13,

64 & 70. In addition, all of Reloaded’s records are maintained in New Jersey and

Pennsylvania. Id. 8. Indeed, out of almost 10,000 orders processed by Reloaded in the

last year, only ten random orders came from the Northern District of Indiana, and less

than 1% of Reloaded’s orders and sales came from random orders from Indiana.

Reloaded’s primary markets are in Pennsylvania, New Jersey, New York, California,

and Texas, from which Reloaded received hundreds of orders from each state. Id. ¶ 12.

Indeed, plaintiff’s only factual allegations regarding the location of sales are of

Reloaded’s sales in New Jersey in Pennsylvania. Complaint ¶¶ 66 and 72. Plaintiff does

not allege any sales in Indiana.

Plaintiff filed this action on April 1, 2022, alleging claims for 1) federal trademark

infringement under the Lanham Act, 2) federal unfair competition, 3) trademark

infringement under New Jersey state law, 4) trademark infringement under

Pennsylvania state law, and 5) unfair competition under Indiana common law.

III. PLAINTIFF’S COMPLAINT SHOULD BE DISMISSED DUE TO LACK OF

PERSONAL JURISDICTION

A. It is Plaintiff’s Burden to Establish the Existence of Personal

Jurisdiction

Pursuant to Federal Rule of Civil Procedure 12(b)(2), a party may move to

dismiss an action for lack of personal jurisdiction. The plaintiff bears the burden of

demonstrating personal jurisdiction. Purdue Research Found. v. Sanofi-Synthelabo,

S.A., 338 F.3d 773, 782 (7th Cir. 2003); RAR, Inc. v. Turner Diesel, Ltd., 107 F.3d 1272,

3
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1276 (7th Cir. 1997). The plaintiff may not rely on vague generalizations or conclusory

allegations unsupported by any factual assertions. Cushing v. City of Chicago, 3 F.3d

1156, 1161 n. 5 (7th Cir. 1993). Where, as here, a defendant supports its motion to

dismiss with a declaration, “the plaintiff may not rest upon allegations in his pleadings,

but must set forth specific facts that the court has jurisdiction.” Int’l Steel Co. v. Charter

Buildings, Inc. 585 F. Supp. 816, 819 (S.D. Ind. 1984).

Personal jurisdiction over claims under the Lanham Act depends on whether an

Indiana court would have jurisdiction over the defendants. See Johnson Worldwide

Assocs., Inc. v. Brunton Co., 12 F. Supp.2d 901, 906 (citing United States v. Martinez

De Ortiz, 910 F.2d 376, 381 (7th Cir.1990)). A two-step analysis is required to

determine whether an Indiana state court, under the personal jurisdiction standards of

Indiana state law, may exercise personal jurisdiction over a nonresident defendant. See

Search Force, Inc. v. Dataforce International, Inc., 112 F. Supp. 2d 771 (S.D. Ind. 2000)

(quoting Anthem Ins. Cos. v. Tenet Healthcare Corp., 730 N.E.2d 1227, 1229 (Ind.

2000)). The court must first determine whether a defendant's conduct falls within

Indiana's long-arm statute, and then determine if a defendant's contacts with the forum

state satisfy federal due process. Id.

The U.S. Constitution requires that to establish personal jurisdiction over a

nonresident defendant corporation, the plaintiff must plead and prove that the defendant

is subject to either: 1) general jurisdiction, which requires a showing that the defendant

has had continuous and systematic business contact with Indiana, or 2) specific

jurisdiction, which requires a showing that defendant has purposefully directed its

activities at residents of Indiana and the lawsuit is related to or arises out of defendant’s

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contacts with Indiana. See Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S.

408, 414-416 (1984).

B. Defendants Are Not Subject to General Personal Jurisdiction

With respect to corporate defendants, courts have interpreted the requirement for

substantial, continuous, extensive, and systematic contacts to be demonstrated by,

among other things, having offices in Indiana, being incorporated in Indiana, and having

employees in Indiana. Anthem Ins. Cos., 730 N.E.2d at 1235. Even demonstrable

business activity within this forum is not sufficient to confer general jurisdiction unless it

is both substantial and continuous in nature. Purdue Research, 338 F.3d at 782 (7th Cir.

2003); Elayyan et. al. v. Sol Melia, SA et. al., 571 F. Supp.2d 886, 898 (N.D. Ind. 2008);

L.H. Carbide Corp. v. Piece Maker Co., 852 F. Supp. 1425, 1434 (N.D. Ind. 1994).

Plaintiff relies exclusively on conclusory assertions, namely that defendants 1)

transact business in this state, 2) have knowingly caused damages to Plaintiff, and 3)

have committed infringement intentionally with knowledge of Plaintiff’s rights, etc. See

Complaint ¶ 6. These conclusory assertions do not comport with reality and do not

establish general jurisdiction.

Defendants do not do business in Indiana, have no physical presence in Indiana,

and have no property, offices, bank accounts, or employees in Indiana. Carrasquillo

Dec. ¶¶ 1-7 & 9-10. Moreover, Reloaded does not conduct any business activities in

Indiana, nor does it direct any advertising or marketing efforts at citizens of Indiana. Id.

¶ 10.

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Certainly, this conduct is incapable of meeting the definition of “business”

contacts within this forum, let alone the type of substantial, extensive, and continuous

contact required by the Indiana Supreme Court to confer general jurisdiction.

C. Defendants Are Not Subject to Specific Jurisdiction in Indiana.

Plaintiff also cannot establish personal jurisdiction over defendants based on

specific jurisdiction. To establish specific jurisdiction, a plaintiff must allege facts to

satisfy three critical requirements: First, the defendant’s contacts with the forum state

must show that it “’purposefully availed [itself] of the privilege of conducting business in

the forum state or purposefully directed [its] activities at the state.’ Second, the plaintiff’s

alleged injury must have arisen out of the defendant’s forum-related activities. And

finally, any exercise of personal jurisdiction must comport with traditional notions of fair

play and substantial justice.” Lexington Ins. Co. v. Hotai Ins. Co., Ltd., 938 F.3d 874,

878 (7th Cir. 2019) (quoting and citing Felland v. Clifton, 682 F.3d 665, 673 (7th Cir.

2012)).

A defendant cannot be brought into another state based solely on ”random,

fortuitous, or attenuated contacts” with the forum state; the defendant must have

purposefully directed its activities at the forum. Burger King Corp. v. Rudzewicz, 471 US

462, 475-476 (1985). “Purposeful direction” is evaluated under the three-part “effects”

test in Calder v. Jones, 465 U.S. 783 (1984), which requires that the defendant

allegedly have (1) committed an intentional act, (2) expressly aimed at the forum state,

(3) causing harm that the defendant knows is likely to be suffered in the forum state. Id.

(quoting Dole Food Co., Inc. v. Watts, 303 F.3d 1104, 1111 (9th Cir. 2002)). All three

parts of the test must be satisfied. Id. at 805.

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Plaintiff further alleges, with no factual basis, that defendants “continued

intentional infringement of Plaintiff’s trademark rights are intentionally targeted at

Plaintiff in Indiana” with “knowledge that the effects of their continued infringing activities

would be felt in Indiana.” Complaint ¶ 6. These allegations are nothing more than

strained, conclusory allegations. Notably, plaintiff has not alleged that there was actual

confusion by residents of Indiana. Even if plaintiff had made such an allegation,

customer confusion alone is insufficient to rise to the level of “targeting,” which requires

that the “customer confusion in a particular forum somehow bear that defendant’s

fingerprints.” Family Watchdog LLC v. Schweiss et. al., 2009 WL 276856 at *6 (S.D. Ind.

2009); see also Nerds on Call, Inc. v. Nerds on Call, Inc. 598 F. Supp.2d 913 (S.D. Ind.

2008).

Plaintiff also cannot satisfy the third requirement under Calder test, as it cannot

allege any factual basis for showing that defendants knew that the alleged conduct

would likely to cause harm in Indiana. It is generally “impermissible to find personal

jurisdiction based only on the maintenance of a website, even one where purchasing of

a product is available, because that defendant is not particularly directing its business

activities toward consumers in the forum state.” Sundance Botanicals, LLC v. The

Power of Elderberries, LLC, No. 2:20-CV-141-PPS-JPK, 2020 WL 5645214, *3 (N.D.

Ind. September 21, 2020) (citing Advanced Tactical Ordnance Sys. v. Real Action

Paintball, 751 F.3d 796 (7th Cir. 2014)).

Here, plaintiff’s Complaint does not allege either actual confusion in Indiana or

any intentional targeting of Indiana customers by the website. Therefore, an exercise of

specific jurisdiction on Defendants would be inappropriate pursuant to the “effects test.”

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Unable to directly connect any alleged conduct of Reloaded to Indiana, plaintiff instead

relies on conclusory allegations of defendants’ state of mind. In fact, plaintiff attempts to

support the proposition that there was intentional targeting of plaintiff in Indiana with a

conclusion that there was continued intentional infringement.

As established above, defendant Carrasquillo has had no individual contacts with

the State of Indiana. Thus, the imposition of jurisdiction over Carrasquillo would be

inherently unfair, unreasonable, and would violate Carrasquillo’s due process rights.

Moreover, it is a recognized principle that a worker whose contact with the forum stems

from acts performed on behalf of an entity is generally not subject to personal

jurisdiction in his individual capacity. See Ryan v. Chayes Virginia, Inc., 553 N.E.2d

1237 (Ind. Ct. App. 1990), quoting Hafner v. Lutheran Church-Missouri Synod, 616 F.

Supp. 735, 739 (N.D. Ind. 1985) (citations omitted).

Even if there were acts performed by Reloaded as alleged in the Complaint, such

acts were performed by Reloaded or Carrasquillo in his capacity as a worker for

Reloaded. Those actions are not sufficient to confer jurisdiction over that person in an

individual capacity. Bowden v. Agnew, 2 N.E.3d 743 (Ind. Ct. App. 2014), quoting

Keesling v. Winstead, 858 N.E.2d 996, 1006 n.16 (Ct. App. Ind. 2006), quoting Int'l

Adm'rs v. Pettigrew, 430 F. Supp.2d 890, 899 (S.D. Iowa 2006).

IV. VENUE IN THIS DISTRICT IS IMPROPER

A. Federal Rule of Civil Procedure 12(b)(3)

Parties may move to dismiss an action pursuant to Federal Rule of Civil

Procedure 12(b)(3) for “improper venue.”

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The Lanham Act has no special venue provision; therefore, the general venue

statute, 28 U.S.C. § 1391, applies here. Id. Section 1391 provides, in relevant part, that

a civil action may be brought in:

(1) a judicial district in which any defendant resides, if all defendants are

residents of the State in which the district is located;

(2) a judicial district in which a substantial part of the events or omissions giving

rise to the claim occurred, or a substantial part of property that is the subject of

the action is situated; or

(3) if there is no district in which an action may otherwise be brought as provided

in this section, any judicial district in which any defendant is subject to the court's

personal jurisdiction with respect to such action.

B. Plaintiff fails to allege sufficient facts to establish that venue is proper

First, venue is improper here because neither defendant resides in this district or

this state or owns any property in Indiana. Neither defendant has any connection to this

district.

Second, no part of the alleged events or omissions giving rise to plaintiff’s claims

could have occurred in Indiana. Any harm would have occurred and been suffered in

Pennsylvania or New Jersey. The Indiana Supreme Court has essentially confirmed this

position by stating that “the tort is said to have been committed in the state where the

last event necessary to make an actor liable for the alleged wrong takes place.”

Hubbard Mfg. Co., Inc. v. Greeson, 515 N.E.2d 1071 (Ind. 1987). If there is liability as

alleged by plaintiff, the “last event” would have occurred in Pennsylvania (where

Reloaded operations are predominantly performed) or New Jersey, where Carrasquillo

resides.
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In addition, Reloaded has only had de minimis orders —10 orders out of 9,749

total, roughly .1% — from this district. “To demonstrate that a ‘substantial part’ of the

events giving rise to a claim of trademark infringement have occurred in a particular

district, the plaintiff can demonstrate either substantial sales of the infringing product in

the district or intentional targeting of the infringing product into the district.” Vera Bradley

Designs, Inc. v. Denny, Cause No. 1:18-CV-70-TLS, 2018 WL 3633986, at *3 (N.D. Ind.

July 30, 2018), quoting Detroit Coffee Co., LLC v. Soup for You, LLC, No. 16-CV-9875,

2018 WL 941747, at *2 (S.D.N.Y. Feb. 16, 2018). "Venue by substantial sales requires,

at minimum, that the plaintiff allege some non-nominal amount of sales in the district."

Vera Bradley, 2018 WL 3633986, at *3. Clearly, ten orders out of almost 10,000 is

nominal and de minimis. Indeed, plaintiff has not alleged any sales within this district.

Instead, it alleges that it suffered harm, but as this Court has previously stated, "venue

would be rendered meaningless if a plaintiff could always bring suit in its home district

simply because it had suffered damages." J.B. Custom, Inc. v. Rossi, No. 1:10-cv-326,

2011 WL 124509, at *4.

Plaintiff could also show that defendants “took some active step to advertise,

market, or otherwise solicit business in this District.” Vera Bradley, 2018 WL 3633986,

at *4, quoting Detroit Coffee, 2018 WL 941747, at *2. Plaintiff has not alleged any such

steps, and defendants took none. These facts lead to the inescapable conclusion that

no part of the events or omissions giving rise to plaintiff’s claim occurred in this district,

and venue is improper here.

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V. IN THE ALTERNATIVE, THIS COURT SHOULD TRANSFER THIS CASE TO THE

DISTRICT OF NEW JERSEY

Alternatively, defendants respectfully request that this case be transferred to the

District of New Jersey, or alternatively, to Eastern District of Pennsylvania. Not only do

Defendants operate/reside in those districts, plaintiff itself is no stranger to both New

Jersey and Pennsylvania. Plaintiff is asserting state law claims under both New Jersey

and Pennsylvania law, based on plaintiff’s state trademark registrations. If any court is

best suited to rule on the issues underlying Plaintiff’s Complaint, it is a court sitting in

the District of New Jersey.

Where venue is improper, a district court may transfer a case in lieu of dismissal

pursuant to 28 U.S.C. § 1406(a), “if it be in the interest of justice.” Even if venue is

proper, however, a district court may still “transfer an action to any district or division

where the action might have originally been brought to promote the convenience of the

parties and witnesses and the interest of justice,” pursuant to 28 U.S.C. § 1404(a).

In deciding whether transfer is appropriate under Section 1406(a), courts look at

whether the transfer is in the interests of justice; that is, whether the transferee forum is

convenient to the parties and witnesses as well as what impact transfer has on the

efficient administration of the court system. Collazo v. Enterprise Holdings, Inc., 823 F.

Supp. 2d 865, 874 (N.D. Ind. 2011), quoting Wild v. Subscription Plus, Inc., 292 F.3d

526, 530 (7th Cir. 2002).

The District of New Jersey is best suited for this matter. Defendant Carrasquillo

resides in New Jersey, thereby satisfying personal jurisdiction requirements. Venue

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requirements would also of course be satisfied because any allegedly infringing

activities committed by defendants would have been directed at New Jersey.

Moreover, plaintiff also does business in New Jersey, as evidenced by the fact

that plaintiff has a registered trademark under New Jersey law. Curiously, it appears as

though that plaintiff does not have a registered trademark under Indiana law, despite the

fact that it is organized in Indiana. Plaintiff’s trademark registration under New Jersey

law could hypothetically also subject it to litigation in New Jersey. Therefore, there is

clearly no burden on plaintiff to litigate this matter in New Jersey.

The interests of justice and judicial efficiency are also best served by transferring

this matter to the District of New Jersey. Plaintiff’s claims of infringement under New

Jersey state law should be adjudicated by a court sitting in the state of New Jersey. The

District of New Jersey would be familiar with the New Jersey statutes regarding

Plaintiff’s claims and have an interest in ensuring that the New Jersey statutes are

correctly and consistently interpreted and applied.

Finally, venue is proper in the District of New Jersey because the alleged actions

underlying Plaintiff’s claims emanated from and occurred there. It is also unique to

trademark infringement cases that “the bulk of the relevant evidence usually comes

from the accused infringer,” and as a result, “the place where the defendant’s

documents are kept weighs in favor of transfer to that location.” Wheel Pros, LLC v.

Performance Tire, No. 17-cv-0042, 2017 WL 6017292, at *10 (C.D. Cal. Apr. 24, 2017)

(quoting In re Genentech, 566 F.3d 1338, 1345 (Fed. Cir. 2009)); see also In re Acer

Am. Corp., 626 F.3d 1252, 1256 (Fed. Cir. 2010) (explaining that a corporation's

relevant material is generally located at its headquarters).

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Alternatively, for virtually the same reasons, the Eastern District of Pennsylvania

would be an appropriate venue to hear this matter. Defendant Reloaded is organized

and operating out of that district, and plaintiff itself has a trademark registration under

the laws of the Commonwealth of Pennsylvania.

VI. IN THE ALTERNATIVE, THE COURT SHOULD DECLINE SUPPLEMENTAL

JURISDICTION OVER PLAINTIFF’S PENNSYLVANIA AND NEW JERSEY STATE
LAW CLAIMS

Count III of the complaint alleges New Jersey Trademark Infringement (N.J. Stat.

§ 56:3-13.16) and Count IV of the complaint alleges Pennsylvania Trademark

Infringement (54 Pa. Cons. Stat. Ann. § 1123). Plaintiff asserted claims for unfair

competition under Indiana common law (Count V), but not for trademark infringement

under Indiana state law, because plaintiff elected not to file for a trademark in Indiana. If

Plaintiffs’ federal claims survive defendants’ motion to dismiss, this Court should

nonetheless decline to exercise supplemental jurisdiction over the Pennsylvania and

New Jersey state law claims.

First, the plain text of 28 U.S.C. § 1367 is clear that a district court has the

discretion to retain or refuse jurisdiction over state law claims. In deciding whether to

exercise supplemental jurisdiction, the Court may consider the “manner that best serves

the principles of economy, convenience, fairness, and comity…” Carnegie-Mellon Univ.

v. Cohill, 484 U.S. 343, 357 (1988).

Here, the balance of factors weighs in favor of declining supplemental jurisdiction

over the Pennsylvania and New Jersey state law claims.

For instance, in weighing convenience, plaintiff itself registered trademarks in

New Jersey and Pennsylvania, but neglected to register its trademarks in its own home

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state of Indiana. If plaintiff took the trouble to file trademarks in New Jersey and

Pennsylvania, then it contemplated taking actions in those states’ courts, which are not

inconvenient to plaintiff.

While this Court is especially well-suited for exercising supplemental jurisdiction

over Indiana common law unfair competition claims, defendants respectfully submit that

this Court should not go out on a limb to interpret or apply the trademark laws of

Pennsylvania and New Jersey, in addition to Indiana common law. Comity requires

"respect for the state's interest in applying its own law, along with the state court's

greater expertise in applying state law." Price v. Tolbert, No. 2:20-cv-00500-JMS-MJD,

2022 WL1204803, at *8 (S.D. Ind. Apr. 22, 2022), quoting Huffman v. Hains, 865 F.2d

920, 923 (7th Cir. 1989). Plaintiff’s claims for trademark infringement under

Pennsylvania and New Jersey state laws are best suited to be interpreted and decided

in each respective state court, or in a federal district court located in Pennsylvania or

New Jersey.

Thus, for the above reasons, it is respectfully requested that this Court decline to

exercise supplemental jurisdiction over Counts III and IV of Plaintiff’s Complaint.

VII. CONCLUSION

For the above-mentioned reasons, defendants respectfully request that this Court

order the plaintiff’s Complaint be dismissed, or in the alternative, that this case be

transferred to the U.S. District Court for the District of New Jersey.

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Respectfully Submitted,

Dated: May 27, 2022 /s/ Robert R. Axenfeld

Robert R. Axenfeld (pro hac vice)
robert@axenfeldlaw.com
AXENFELD LAW GROUP, LLC
2001 Market St., Suite 2500
Philadelphia, PA 19103
Telephone: 215.422.3000
Facsimile: 215.422.3642
Attorneys for Defendants

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