IP Law Daily, TRADEMARK—D. Utah: Utah court finds it lacks personal jurisdiction over dispute between Tennessee-based soccer team and Arkansas public university, (Feb 4, 2025)

By Kevin M. Finson

Specific personal jurisdiction over a public university located in Arkansas did not exist in Utah because it was not alleged that the university had purposely availed itself of conducting activities within the forum state.

Arkansas State University was not subject to the personal jurisdiction of the Utah courts, the U.S. District Court in Salt Lake City has held. There were no specific facts alleged that would support specific personal jurisdiction, only conclusory statements (Chattanooga Professional Soccer Management, LLC v. Arkansas State University, No. 2:23-cv-00850-JNP (D. Utah Feb. 3, 2025)).

Chattanooga Professional Soccer Management, LLC (CPSM) was the owner of the Red Wolves Soccer organization which had its principal place of business in Salt Lake City, Utah, but operated its professional team, the Chattanooga Red Wolves SC, in Chattanooga, Tennessee. Arkansas State University (ASU) was a publicly funded state university in Jonesboro, Arkansas, which owned a U.S. trademark registration for the mark RED WOLVES, used with its sports programs. CPSM filed applications to register the mark CHATTANOOGA RED WOLVES SC and a related design mark, which were denied based on likelihood of confusion with ASU’s mark, among others. CPSM brought a declaratory judgment action in the Eastern District of Tennessee, which was dismissed for lack of subject matter jurisdiction due to ASU’s 11th Amendment immunity. After the Trademark Trial and Appeal Board denied registration of amended applications, CPSM brought suit in the District of Utah to appeal that judgment and added an additional claim for declaratory relief. ASU moved to dismiss, arguing that the court lacked both personal and subject matter jurisdiction over it. The court considered personal jurisdiction first, finding that this was the simpler analysis.

Personal jurisdiction. The court began by noting that Utah’s long-arm statute extended jurisdiction to the fullest extent permitted by the Due Process clause of the Fourteenth Amendment, so only the due process analysis was necessary. CPSM argued, first, that ASU had “continuing relationships” with Utah because it marketed its educational and athletic programs nationwide, but the court found no allegations were made about specific numbers of Utah residents contacted or any ongoing contractual relationships with Utah residents. CPSM argued that ASU had deliberately exploited the Utah market, but again the court found a lack of specific factual allegations to support this conclusory allegation, and that the allegations instead seemed to point to a general, nationwide advertising campaign not directed at Utah at all. Finally, CPSM argued that ASU’s conduct in litigating the trademark dispute had harmful effects in Utah, but the court found that all of the communications related to the dispute were directed to the team in Tennessee, and that this was a dispute which essentially concerned a Tennessee-based soccer team and an Arkansas public university, which would have little impact on Utah. Accordingly, the court found that ASU lacked the minimum contacts with Utah necessary to support specific personal jurisdiction.

Because it found that it lacked personal jurisdiction, the court dismissed the case without deciding the issue of whether it possessed subject matter jurisdiction.

The Case is No. 2:23-cv-00850-JNP.

Judge: Parrish, J.

Attorneys: Alexandra L. Hodson (Parsons Behle & Latimer PC) for Chattanooga Professional Soccer Management LLC. Paige Waldrop Mills (Bass Berry & Sims PLC) for Arkansas State University.

Companies: Chattanooga Professional Soccer Management LLC

Cases: Trademark UtahNews