IP Law Daily, TRADEMARK—E.D. Pa.: Marketer’s jurisdiction arguments prevail against trademark suit over search ads, (Nov 5, 2025)

By Jonathan Anderson

The court said it lacks both general personal jurisdiction and specific personal jurisdiction, and also held that jurisdictional discovery is not appropriate, citing the potential for a “fishing expedition.”

The federal district court for the Eastern District of Pennsylvania dismissed a co-defendant from a trademark infringement lawsuit for lack of personal jurisdiction. The court reasoned that it lacks general personal jurisdiction because the co-defendant is incorporated and has its principal place of business in another state. The court also found that it lacks specific personal jurisdiction because the co-defendant’s actions do not satisfy the Calder “effects” test or the traditional test for specific jurisdiction. The court further held that jurisdictional discovery is not appropriate because the plaintiff did not make a threshold showing that the court may have specific personal jurisdiction over the co-defendant (Printfly Corp. v. JWT Productions, Inc., No. 2:25-cv-00030-JHS (E.D. Pa. Nov. 4, 2025)).

Background. Printfly Corporation, based in Philadelphia, Pennsylvania, sells custom apparel and promotional products on its website and owns the federal trademark for RUSH ORDER TEES. Co-defendant, JWT Productions, Inc., d/b/a Thread Logic, is a Minnesota-based corporation that competes with Printfly in the custom apparel and promotional product marketplace. Co-defendant ROI Revolution, Inc. is Thread Logic’s marketing agency and is based in Raleigh, North Carolina.

Printfly alleged that ROI created online advertisements for Thread Logic that included the term “Rush Order Tees” in the heading and text of multiple paid search engine advertisements. Printfly alleged that ROI created these advertisements using Google’s dynamic keyword insertion feature, which allegedly inserted the RUSH ORDER TEES trademark into Thread Logic’s Google ads whenever someone used the trademark as a search term.

Printfly sued both Thread Logic and ROI alleging unlawful trademark infringement. ROI filed a motion to dismiss Printfly’s amended complaint. The court held a hearing on the matter on Sept. 15, 2025.

General personal jurisdiction. First, the court found that it lacks general personal jurisdiction over ROI because the company is incorporated and has its principal place of business in North Carolina. ROI is not registered to do business in Pennsylvania, nor does it have any physical assets, property, bank accounts, telephone numbers, or registered agents in Pennsylvania. Printfly also acknowledged that “there is no general personal jurisdiction in this matter.”

Specific personal jurisdiction. Second, the court found that it lacks specific personal jurisdiction over ROI because ROI’s actions do not satisfy the Calder “effects” test or the traditional test for specific jurisdiction.

“Effects” test. The court reasoned that Printfly failed to satisfy the express aiming prong of the “effects” test. Calder v. Jones, 465 U.S. 783 (1984). Printfly alleged that the advertisements are accessible in Pennsylvania, but the court found that Printfly could not show how from that fact alone it could be inferred that ROI directed its effects toward Pennsylvania residents. Further, the court found that Printfly did not produce any evidence showing that ROI targeted Pennsylvania through the advertisement.

Traditional test. The court reasoned that Printfly failed to satisfy the three-step traditional test because ROI did not meet the first step, namely establishing minimum contacts with Pennsylvania. Printfly argued that ROI directed activities toward Pennsylvania through advertisements visible to Pennsylvania residents. However, the court found that Printfly did not plead any facts indicating that ROI targeted the advertisement at Pennsylvania, intended to interact with its residents or conduct business there, or otherwise created a substantial connection with the state. Printfly further argued that ROI directed activities toward Pennsylvania through ROI’s own website allowing users to directly interact with ROI. However, the court said this argument fails because ROI’s website is “essentially passive” because it is not used to transact business or sell to customers, but instead used only to solicit inquiries to generate communication.

Jurisdictional discovery. Third, the court held that jurisdictional discovery is not appropriate because Printfly has not made a threshold showing that the court may have specific personal jurisdiction over ROI. All Printfly alleged was that ROI intentionally used Printfly’s name to capture the attention of Pennsylvania customers familiar with Printfly’s brand. ROI offered an affidavit disputing that allegation. The court cited Third Circuit precedent holding that “a mere unsupported allegation that the defendant ‘transacts business’ in an area is ‘clearly frivolous’ for purposes of determining whether jurisdictional discovery is warranted.” Heartrepreneur, LLC v. Jones, No. CV 18-2417, 2020 WL 2839102 (E.D. Pa. June 1, 2020). The court said it would not permit jurisdictional discovery “to enable Plaintiff to conduct a fishing expedition on whether specific jurisdiction over ROI exists.”

The Case is No. 2:25-cv-00030-JHS.

Judge: Slomsky, J.

Attorneys: Anton Kaminsky (Kaminsky Law, LLC) for Printfly Corp. Phillip J. Duffy (Gibbons PC) for JWT Productions, Inc. d/b/a Thread Logic. Bonnie M. Hoffman (Hangley Aronchick Segal Pudlin & Schiller) for ROI Revolution, Inc.

Companies: Printfly Corp.; JWT Productions, Inc. d/b/a Thread Logic; ROI Revolution, Inc.

Cases: TechnologyInternet Trademark PennsylvaniaNews