IP Law Daily, TRADEMARK—M.D. Tenn.: New York-based corporation not subject to jurisdiction in Tennessee over use of ‘Vermeer’ mark, (Dec 17, 2024)

By Kevin M. Finson

Trademark infringement and cancellation claims were dismissed for want of personal jurisdiction because the defendant had only random, isolated, and fortuitous contacts with the forum state.

An agricultural equipment manufacturer failed to establish personal jurisdiction in Tennessee over a New York-based software company that allegedly infringed the plaintiff’s VERMEER trademark, the U.S. District Court in Nashville has held. The defendant’s interactive website and its attendance at a tradeshow in Tennessee did not provide sufficient contacts with the forum (Vermeer Manufacturing Co. v. AeroCine Ventures Inc., No. 3:24-cv-00699 (M.D. Tenn. Dec. 16, 2024)).

Iowa-based Vermeer Manufacturing Company (Vermeer) is a manufacturer of industrial and agricultural equipment and the owner of several registrations for its house mark VERMEER and related stylized V logos. These marks had been in use for many years. AeroCine Ventures, Inc. (AeroCine) is the owner of a trademark registered in 2019 for VERMEER and a stylized V mark for “software for augmented reality drone navigation.” AeroCine is a Delaware corporation with its principal place of business in New York.

Vermeer brought suit against AeroCine for trademark infringement and cancellation of AeroCine’s registration, along with related claims, in the Middle District of Tennessee, where AeroCine had presented its product under the allegedly infringing mark at its booth at the 2023 Army Mission Solutions Summit. AeroCine moved to dismiss for lack of personal jurisdiction and for failure to state a claim.

Waiver. Vermeer argued that AeroCine waived its jurisdictional defenses because its counsel applied for admission to the court rather than appear pro hac vice and filed a general appearance rather than a special appearance. The court held that while certain conduct such as giving a plaintiff the reasonable impression that a case would be litigated on the merits in the present forum could amount to a waiver, none of these actions by counsel reached that level. A motion to dismiss under Rule 12(b)(6) made without raising a jurisdictional defense could amount to a waiver, but in the present case the 12(b)(6) motion was filed after the jurisdictional motion and was therefor treated as a motion in the alternative.

Personal jurisdiction. Vermeer argued that specific personal jurisdiction was appropriate because AeroCine’s executives attended a trade show in the forum state and maintained an online presence accessible worldwide. The court found that appearance at the trade show, which attracted an international audience and was not targeted to Tennessee residents in any way, was a “random, isolated, [and] fortuitous” contact not sufficient to support specific personal jurisdiction. As for the website, the court found that because there was no evidence it was ever accessed by anyone from Tennessee, the operation of a website which could be accessed worldwide could not amount to purposeful availment of the forum state.

The court granted the motion to dismiss, finding that it lacked personal jurisdiction over AeroCine. The court did not reach AeroCine’s arguments as to failure to state a claim.

The Case is No. 3:24-cv-00699.

Judge: Trauger, A.

Attorneys: Elizabeth Campbell Tirrill (Neal & Harwell, PLC) for Vermeer Manufacturing Co. Casey Scott McKay (MCLaw, PLLC) for AeroCine Ventures Inc.

Companies: Vermeer Manufacturing Co.; AeroCine Ventures Inc.

Cases: Trademark TennesseeNews