Intellectual Property Law

Court Finds Tie Goes to Plaintiff's Choice of Washington Forum

By Michael Atkins

Plaintiff Pacific Coast Trailers, LLC, and defendant Cozad Trailer Sales, LLC, both lay claim to the trademark RELIANCE, whose title appears cloudy due to a number of transfers and a bankruptcy.

Pacific Coast Trailers (PCT), a Spokane company, filed suit for trademark infringement in the Eastern District of Washington against Cozad, a California company. Cozad then filed suit against PCT in the Eastern District of California.

Cozad moved to dismiss PCT’s claims for improper venue.

It was a close call. In the end, the court found that tie goes to the plaintiff, which is entitled to some deference in the choice of its forum. So, it denied Cozad’s request.

“In order to decide who had the right to use the RELIANCE trademark, it is essential to determine which contract validly transferred the rights to the trademark. They cannot both be valid, and it is necessary to determine which one is. The parties to both contracts are in Washington and California, so the sources of proof and witnesses are likely to be in both jurisdictions. The cause of action arises exclusively out of Defendants’ contacts in Washington, specifically the contract they negotiated with [lender] Sterling in this state. …

“Because the parties and witnesses are in both proposed venues, most of the relevant factors are neutral. Evidence, discovery, and witnesses are split roughly between the two states. Courts in both forums are equally familiar with the trademark law that governs this case, although this Court is in a better position to decide the claims under Washington tort law. The events leading to the suit occurred in both states. And although Defendants’ contacts with Washington are not extensive, the suit arises out of their contract negotiations here.

“The only factor that weighs significantly in either direction is PCT’s choice of this district. While the plaintiff’s choice of forum is not entitled to absolute deference, particularly when parties and witnesses are located elsewhere, in this case it is the only factor that informs the Court’s decision. And while it will inconvenience Defendants to have to defend themselves in Washington, a court should not grant a transfer if doing so would merely shift the inconvenience of litigation from one party to the other.”

The case cite is Pacific Coast Trailers, LLC v. Cozad Trailer Sales, LLC, 2010 WL 2985701, No. 10-111 (E.D. Wash. July 21, 2010) (Shea, J).

Full post as published by Seattle Trademark Lawyer on August 04, 2010 (boomark / email).