IP Law Daily, TRADEMARK—D. Utah: Utah proper forum for dispute involving product safety testing certification mark, (Sep 16, 2026)

By Sherri M. Schroeder, J.D.

The court found personal jurisdiction and proper venue for the testing and certification company's dispute over use of allegedly falsified product listing sheets by an RV company.

The federal district court in Utah has denied a motion to dismiss filed by Icon Direct, LLC, a Michigan company that manufactures and sells products for the recreational vehicle (RV) industry through an e-commerce business and aftermarket platform. Testing Engineers International, Inc. (TEi), a Utah corporation that certifies a variety of products to assure they meet specific safety, quality, or governmental standards, alleged that Icon Direct began using falsified product listing sheets that included the TEi's Certification Mark even though Icon Direct had never contracted with TEi for the testing or certification of any product. When TEi filed suit against Icon Direct in the Utah court, Icon Direct moved to dismiss the claims against it under Federal Rule of Civil Procedure 12(b)(2) and (3) for lack of personal jurisdiction and improper venue. The Utah court, however, denied the motion after finding that TEi had shown Icon Direct had the required minimum contacts with the Utah forum and that the exercise of personal jurisdiction did not offend traditional notions of fair play and substantial justice. TEi was also able to satisfy venue requirements by showing that Icon Direct took actions directed at Utah (Testing Engineers International, Inc. v. Icon Direct, LLC, No. 2:25-cv-00656-RJS-DAO (D. Utah Sep. 15, 2026)).

Background. TEi is one of the "premier" organizations for product and process testing and standards compliance. "A certification from TEi assures consumers the product complies with published standards of safety and quality," according to TEi's Complaint. Once a product has been certified and listed by TEi, TEi provides an official Product Listing Sheet that displays TEi's Certification Mark, which is U.S. certification mark registration number 2,039,643. This mark is licensed to licensees whose products TEi has tested.

TEi alleged that Icon Direct began using TEi's Certification Mark on falsified product listing sheets. These falsified sheets otherwise matched TEi's Product Listing Sheet, including identifying TEi as the source of the certification and prominently featuring TEi's Utah mailing address in the header of each page. However, TEi had never contracted with Icon Direct for the testing or certification of any product.

Personal jurisdiction. Utah's long-arm statute is coextensive with the federal Due Process Clause, the court noted. Under the Due Process Clause, personal jurisdiction over an out-of-state defendant such as Icon Direct comports with federal due process if the defendant has minimum contacts with the state such that having to defend a lawsuit there would not offend traditional notions of fair play and substantial justice. Therefore, the court required TEi to show that Icon Direct purposefully directed its activities at Utah and that its injuries arose out of these Utah-related activities. Using the harmful effects test, the court found that TEi had shown Icon Direct's conduct was intentional because, as alleged in the Complaint, Icon Direct knew of TEi's Certification Mark, intentionally altered TEi's product listing sheeting, posted the falsified product listing sheet without TEi's authorization on its website, and intended the falsified mark to promote its products. For the second element, the court also found that Icon Direct aimed this activity at Utah by including TEi's Utah address on the falsified product listing sheet, making it "foreseeable and reasonable that Icon Direct would be hailed into a Utah court to defend that activity." Because the Complaint alleged that Icon Direct was aware TEi was in Utah, Icon Direct also "knew the brunt of the injury would be felt in the state," which is the third element of the harmful effects test. Therefore, the court concluded Icon Direct purposefully directed its activities at Utah.

The court then found that TEi 's claims all derived from Icon Direct's contact with Utah (the copying of information from a Utah-based website and including a Utah address on the falsified Product Listing Sheet)—the second element of the minimum contacts test. Because the court concluded minimum contacts existed, the court then determined whether the exercise of personal jurisdiction was reasonable in light of the case's circumstances. Although the burden placed on Icon Direct weighed in its favor, the court balanced this with TEi's interest in convenient, effective relief in the forum of its choice. The other factors were either neutral or weighed in favor of personal jurisdiction. Utah had an interest in resolving the dispute based on Icon Direct's contacts with the forum state, and both parties agreed that Indiana and Utah had equal interest in deciding the federal claims at issue. The court found the efficiency factor to be neutral because there had been no substantive motion practice in the case and discovery had not yet commenced. Therefore, the court concluded it had personal jurisdiction over Icon Direct.

Venue.The court concluded that venue was proper because the court found Icon Direct's actions were directed at Utah, thus satisfying venue. "Icon Direct took Utah-based materials, altered those materials to create the False Product Listing Sheet, and posted the sheet on its website with TEi's Salt Lake City, Utah address prominently featured," stated the court.

Therefore, the court denied Icon Direct's motion to dismiss.

The Case is No. 2:25-cv-00656-RJS-DAO.

Judge: Shelby, R.

Attorneys: Jonathan H. Love (Parsons Behle & Latimer PC) for Testing Engineers International Inc. Alexandra Angyalosy (Honigman LLP) for Icon Direct LLC.

Companies: Testing Engineers International Inc.; Icon Direct LLC

Cases: Trademark UtahNews