United States District Court, D. South Carolina, Greenville Division
OPINION AND ORDER
C. Coggins, Jr. United States District Judge.
matter comes before the Court on Defendant's Motion to
Dismiss for Lack of Personal Jurisdiction and Insufficient
Service of Process. ECF No. 14. Plaintiff filed a Response in
Opposition, ECF No. 19, and Defendant filed a Reply, ECF No.
20. Therefore, the Motion is ripe for review.
Procedural and Factual History
is a South Carolina corporation with its principal place of
business in Simpsonville, South Carolina. Plaintiff
"makes and sells role play toys (for children to imitate
real life occupations) as well as toy bows and arrows, toy
guns, toy trucks, and toy vehicles." ECF No. 8 at 2.
Plaintiff "began selling toys in commerce under the MAXX
ACTION trademark at least as early as April 1, 2014, and on
September 6, 2017, Plaintiff filed a trademark application
with the USPTO to register MAXX ACTION for 'Role play
toys in the nature of playsets for children to imitate real
life occupation; Toys, namely, toy bows and arrows, toy guns,
toy trucks, toy vehicles,' Application Serial No.
87598578." Id. at 3. Plaintiff's toys
generally retail for approximately $4.99 to $19.99 and are
sold through "mass market" outlets such as Target,
Walmart, and other large stores. Id. at 5- 6.
is a Texas limited partnership with its principal place of
business in McKinney, Texas. "Defendant makes and sells
radio-controlled model vehicles and related parts and
motors." Id. at 2. Defendant's vehicles
retail for approximately $149.99 to $949.99 and are sold
online and through specialized hobby shops. Id. at
5-6. Defendant claims ownership to a variety of trademark
registrations containing the phrase "MAXX" such as
"E-MAXX," "MINI MAXX," and other related
phrases. Id. The original "MAXX" trademark
was issued on January 2, 2007, with other trademarks
containing permutations of that phrase being issued since
that time up to and including December 27, 2016. Id.
December 4, 2017, Defendant sent Plaintiff a cease-and-desist
letter, "in which Defendant asserts that it uses its
Registered Marks to identify, advertise, and promote its
radio-controlled model vehicles, as well as related goods,
and that [Plaintiff] is violating trademark rights of
[Defendant] by using the mark MAXX ACTION in connection with
its offering of role play toys . . . and further that
resulting consumer confusion caused by the use of MAXX ACTION
will unfairly give the goods of [Plaintiff] a ready
acceptance in the marketplace that is undeserved."
Id. at 3 (internal quotations omitted). Defendant
demanded that Plaintiff cease using and abandon the MAXX
ACTION trademark. Id. at 8. This cease-and-desist
letter was also sent to six vendors who sell Plaintiff's
products. Id. at 9.
Plaintiff filed a Complaint, which was subsequently amended
prior to service, which alleges three causes of action. ECF
Nos. 1, 8. First, Plaintiff seeks a declaration that its MAXX
ACTION trademark does not violate any laws or the rights of
Defendant to its Registered Marks. Id. at 10.
Second, Plaintiff requests a declaration "that, when
considering Defendant's Registered Marks, no likelihood
of confusion would occur by the continued use of, and the
subsequent federal registration of, Plaintiff's MAXX
ACTION trademark, which application is pending before the
USPTO." Id. at 11. Finally, Plaintiff alleged a
cause of action for tortious interference with contractual
relationships, seeking damages based on Defendant's
transmission of the cease-and-desist letter to
Plaintiff's vendors. Id. at 11-12.
Amended Complaint includes the following allegation about
Court has personal jurisdiction over Defendant because
Defendant engages in business in the State of South Carolina
and has sufficient contacts in the State of South Carolina to
subject it to in personam jurisdiction.
Particularly, Defendant sells its products online and through
various dealer stores, and Defendant makes its products
available to customers all over the United States, including
the State of South Carolina. Further, on information and
belief, Defendant sells its products in South Carolina.
ECF No. 8 at 2. In response to Plaintiff's Amended
Complaint, Defendant entered a special appearance for the
limited purpose of contesting the Court's personal
jurisdiction and filed a Motion to Dismiss. The parties have
fully briefed Defendant's Motion, and it is ripe for the
defendant challenges the Court's personal jurisdiction
under Rule 12(b)(2), the plaintiff has the burden of proving
that jurisdiction exists by a preponderance of the evidence.
In re Celotex Corp., 124 F.3d 619, 628 (4th Cir.
1997). "If the existence of jurisdiction turns on
disputed factual questions[, ] the court may resolve the
challenge on the basis of a separate evidentiary hearing, or
may defer ruling pending receipt at trial of evidence
relevant to the jurisdictional question." Combs v.
Bakker, 886 F.2d 673, 676 (4th Cir. 1989). However, when
"a district court rules on a Rule 12(b)(2) motion
without conducting an evidentiary hearing or without
deferring ruling pending receipt at trial of evidence
relevant to the jurisdictional issue, but rather relies on
the complaint and affidavits alone, 'the burden on the
plaintiff is simply to make a prima facie showing of
sufficient jurisdictional basis in order to survive the
jurisdictional challenge.'" In re Celotex
Corp., 124 F.3d at 628 (quoting Combs, 886 F.2d
at 676). "In deciding whether the plaintiff has made the
requisite showing, the court must take all disputed facts and
reasonable inferences in favor of the plaintiff."
Carefirst of Md., Inc. v. Carefirst Pregnancy Ctrs.,
Inc., 334 F.3d 390, 396 (4th Cir. 2003) (citing
Mylan Labs, Inc. v. Akzo, N.V., 2 F.3d 56, 59-60
(4th Cir. 1993)). Additionally, "'[i]n reviewing the
record before it, a court may consider pleadings, affidavits,
and other evidentiary materials without converting the motion
to dismiss to a motion for summary judgment.'"
Magic Toyota, Inc. v. Se. Toyota Distribs., Inc.,
784 F.Supp. 306 (D.S.C. 1992) (quoting VDI Techs. v.
Price, 781 F.Supp. 85, 87 (D.N.H. 1991)).
federal court may exercise personal jurisdiction over a
defendant in the manner provided by state law. Fed.R.Civ.P.
4(k)(1)(A). Thus, "for a district court to validly
assert personal jurisdiction over a non-resident defendant,
two conditions must be satisfied. First, the exercise of
jurisdiction must be authorized by the long-arm statute of
the forum state, and, second, the exercise of personal
jurisdiction must also comport with Fourteenth Amendment due
process requirements." Christian Sci. Bd. of Dirs.
of FirstChurch of Christ, ...