IP Law Daily, TRADEMARK—N.D. Cal.: Personal jurisdiction lacking over Danish company that never sold goods in the United States, (Jun 22, 2023)

By Kevin M. Finson, J.D.

The company’s filing and subsequent abandonment of a U.S. trademark application was not enough to support jurisdiction.

An apparel seller’s trademark infringement suit against a Danish company missed for lack of jurisdiction because it was undisputed that the company never sold any allegedly infringing goods in the United States and there was no evidence that it caused its products to be available to U.S consumers, the federal district court in Oakland, California, has ruled. The defendant merely placed goods into the stream of commerce in Denmark and took no action directed to the United States. While the Danish company had filed a U.S. trademark application, which was evidence of an intent to sell goods to consumers in the United States, the application was withdrawn, and jurisdiction could not be based on future intent in any case (Athleta, Inc. v. Sports Group Denmark A/S, June 20, 2023, Tigar, J.).

Athleta, Inc. was a seller of apparel under the ATHLETA mark, and brought suit against Sports Group Denmark A/S (SGD), a foreign entity, for infringement based on allegations that SGD had marketed confusingly similar ATHLECIA-branded apparel. SGD moved to dismiss for lack of personal jurisdiction and for failure to state a claim.

Personal jurisdiction. SGD filed a declaration of its Chief Financial Officer claiming that its principal place of business was in Denmark, that it had no property, stores, bank accounts, or employees in the United States, and had never advertised in or shipped products to the United States. Athleta did not dispute these facts, but argued only that it was possible to order goods in California from third-party sellers, and that SGD had an intention of selling directly in the United States in the future based on filing an application with the USPTO to register the ATHLECIA mark. SGD withdrew its application two weeks after Athleta filed suit.

The court held that because there was no dispute that Athleta had never sold goods with the mark at issue in the United States, either by itself or through agents, but had only placed the goods into the stream of commerce in Europe, SGD had not directed any activity at the United States to support the exercise of personal jurisdiction.

The court rejected Athleta’s argument that SGD is subject to personal jurisdiction because it placed products in the stream of commerce. It is hornbook law that the placement of a product into the stream of commerce, without more, is not an act purposefully directed toward a forum state, the court said. Athleta had not shown the “more” that is required to exercise personal jurisdiction

Finally, while SGD’s filing of a U.S. trademark application was evidence of an intent to sell goods to consumers in the United States, SGD had withdrawn that application. “More importantly, Athleta has pointed to no authority that future intent is sufficient to justify the exercise of personal jurisdiction,” the court said.

Finding that it lacked jurisdiction, the court did not reach the parties’ arguments on failure to state a claim.

The case is No. 4:22-cv-03192-JST.

Attorneys: Felipe Corredor (Conrad Metlitzky Kane LLP) for Athleta, Inc. Arne M. Olson (Olson & Hierl, Ltd.) for Sports Group Denmark A/S.

Companies: Athleta, Inc.; Sports Group Denmark A/S

Cases: Trademark CaliforniaNews