Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA345299
`ESTTA Tracking number:
`05/03/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Blunt Wrap U.S.A., Inc.
`Corporation
`594 Asbury Drive Suite C
`Mandeville, LA 70471
`UNITED STATES
`
`Citizenship
`
`Louisiana
`
`Attorney
`information
`
`Brett A. North
`Garvey, Smith, Nehrbass & North, L.L.C.
`3838 N. Causeway Blvd. Suite 3290
`Metairie, LA 70002
`UNITED STATES
`BrettNorth@gsnn.us Phone:5048352000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`76700557
`05/03/2010
`
`Publication date
`Opposition
`Period Ends
`
`04/27/2010
`05/27/2010
`
`Akrum Alrahib
`7407 N. 82 nd Lane
`Glendale, AZ 85303
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 034.
`All goods and services in the class are opposed, namely: TOBACCO PRODUCTS, NAMELY,
`FLAVORED TOBACCO, CIGARS, CIGAR WRAPS AND CIGARETTES
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3099180
`
`05/30/2006
`
`Word Mark
`
`KUSH
`
`Application Date
`
`08/02/2004
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA345299
`ESTTA Tracking number:
`05/03/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Entity
`Address
`
`Blunt Wrap U.S.A., Inc.
`Corporation
`594 Asbury Drive Suite C
`Mandeville, LA 70471
`UNITED STATES
`
`Citizenship
`
`Louisiana
`
`Attorney
`information
`
`Brett A. North
`Garvey, Smith, Nehrbass & North, L.L.C.
`3838 N. Causeway Blvd. Suite 3290
`Metairie, LA 70002
`UNITED STATES
`BrettNorth@gsnn.us Phone:5048352000
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`76700557
`05/03/2010
`
`Publication date
`Opposition
`Period Ends
`
`04/27/2010
`05/27/2010
`
`Akrum Alrahib
`7407 N. 82 nd Lane
`Glendale, AZ 85303
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 034.
`All goods and services in the class are opposed, namely: TOBACCO PRODUCTS, NAMELY,
`FLAVORED TOBACCO, CIGARS, CIGAR WRAPS AND CIGARETTES
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3099180
`
`05/30/2006
`
`Word Mark
`
`KUSH
`
`Application Date
`
`08/02/2004
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 034. First use: First Use: 2006/02/01 First Use In Commerce: 2006/02/01
`Tobacco products and accessories, namely, cigarettes, cigars, rolling papers
`made out of paper and/or tobacco for cigarettes and cigars, and rolling tobacco
`for cigarettes and cigars
`
`Attachments
`
`78460539#TMSN.jpeg ( 1 page )( bytes )
`PURPLEKUSHOPPOSITION.pdf ( 26 pages )(849796 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Brett A. North #42040/
`Brett A. North
`05/03/2010
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Blunt Wrap U.S.A., Inc.
`
`vs.
`
`Akium Alrahib
`
`Opposer,
`
`Applicant
`
`*
`
`*
`
`*
`
`>!<
`
`*
`
`Opposition No. __
`
`NOTICE OF OPPOSITION
`
`Blunt Wrap U.S.A., lnc., a Louisiana company, having its principal place of business at
`
`594 Asbury Drive, Suite C, Mandeville, Louisiana 70471 (“Opposer”), opposes Application
`
`Serial Number 76/700,557, filed by Akrum Alrahib, a person of the age of majority with address
`
`located at 7407 N. 82'“ Lane, Glendale, Arizona 85303. Opposer believes that it is or will be
`
`damaged by Application Serial Number 76/700,557 and the registration of the mark applied for
`
`therein, and alleges the following for opposition of same:
`
`LIKELIHOOD OF CONFUSION
`
`I.
`
`Since well prior to November 27, 2009, Applicant’s constructive first use date,
`
`Opposer and/or its licenses have used the mark KUSH, in connection with tobacco products and
`
`accessories, namely , cigarettes, cigars, rolling papers made out of paper and/or tobacco for
`
`cigarette and cigars, and rolling tobacco for cigarettes and cigars.
`
`2.
`
`Opposer owns United States federal registration number 3,099,180 for KUSH for
`
`“tobacco products and accessories, namely , cigarettes, cigars, rolling papers made out of paper
`
`and/or tobacco for cigarette and cigars, and rolling tobacco for cigarettes and cigars.”
`
`
`
`3.
`
`On November 27, 2009, Applicant filed the Application, based on an intent to use,
`
`to register Applicant’s Mark in connection with “TOBACCO PRODUCTS, NAMELY,
`
`FLAVORED TOBACCO, CIGARS, CIGAR WRAPS AND CIGARETTES.”
`
`4.
`
`Upon information and belief, Applicant did not use Applicant’s Mark in United
`
`States commerce for the goods covered in the Application prior to his constructive first use date
`
`ofNovember 27, 2009.
`
`5.
`
`The goods covered by the Application are identical and/or closely related to the
`
`goods offered in connection with Opposer’s KUSH mark and registration number 3,099,180.
`
`6.
`
`Applicant’s Mark so resembles Opposer’s KUSH Mark as to be likely, when
`
`applied to Applicant’s goods, to cause confusion, to cause mistake, and to deceive the trade and
`
`public, who are likely to believe that Applicant’s goods gave their origin with Opposer and/or
`
`that such goods are approved, endorsed or sponsored by Opposer or associated in some way with
`
`Opposer. Opposer would thereby be injured by the granting to Applicant of a certificate of
`
`registration for Applicant’s Mark.
`
`7.
`
`Opposer would be further injured by the granting of a certificate of registration to
`
`Applicant because Applicant’s Mark would falsely suggest a connection between Applicant and
`
`Opposer.
`
`INJUNCTION FOR KUSH
`
`8.
`
`This is not the first time Applicant has attempted to violate the rights of Opposer
`
`in its “KUSH” mark.
`
`9.
`
`On March 15, 2007, the United States District Court for the Eastern District of
`
`Louisiana signed a Consent Decree (Exhibit A) which, in pertinent part, ordered:
`
`
`
`C.
`
`DaBomb Products, Inc., and each of their respective owners, shareholders,
`directors, officers, employees, manufacturers, agents, legal representatives, heirs,
`successors, and all others in privity or acting in concert therewith, are HEREBY
`PERMANENTLY ENIOINED during the term of United States Trademark
`Registration No. 3,099,180, registered May 30, 2006, for the trademark “KUSH”
`from infringing Blunt Wrap’s trademark registration by using the tradmark
`“KUSH” for tobacco products and accessories, i.e., cigarettes, cigars, rolling
`papers made of paper and/or tobacco for cigarettes, and cigars, and rolling tobacco
`for cigarettes and cigars and/or by using any other mark that is confusingly similar
`thereto.
`
`10.
`
`Opposer contends that such injunction applies to Applicant as the alter ego of
`
`DaBomb Products, Inc. In Opposer’s patent infringement suit (for the product in which the
`
`“KUSH” mark was affixed), Applicant was found by the United States District Court for the
`
`Eastern District of Louisiana signed a Consent Decree to be the “alter ego” of DaBomb Products,
`
`Inc. (Exhibit B — — Order and Reasons, pg. 17) finding that Mr. Alrahib was the creator, president,
`
`statutory agent, and sole director and shareholder of Da Bomb (along with a second company
`
`Sunrise Tobacco).
`
`ll.
`
`Adding the adjective term “purple” to the “KUSH” mark still uses the “KUSH”
`
`mark and violates the injunction beyond any likelihood of confusion.
`
`12.
`
`Allowing Applicant to register the mark would violate and/or assist Applicant in
`
`Violating the terms of the injunction and further damage Opposer.
`
`WHEREFORE, Opposer believes that it will be damaged by registration of Applianct’s
`
`Mark and requests that the opposition be sustained and said registration be denied.
`
`Please recognize as attorney for this for Opposer in this proceeding Brett A. North of the
`
`firm Garvey, Smith, Nehrbass & North, L.L.C., 3838 North Causeway Boulevard, Suite 3290,
`
`Metairie, Louisiana 70002.
`
`
`
`Please address all communications to Brett A. North at the address listed below.
`
`Respectfully submitted,
`Blunt Wrap U.S.A., Inc.
`
`
`/Brett A. North #42 040/
`
`Brett A. North, Patent Attorney
`
`Garvey, Smith, Nehrbass & North, LLC.
`
`3838 North Causeway Boulevard, Suite 3290
`Metairie, Louisiana 70002
`
`Tel: (504) 835-2000
`
`Fax: (504) 835-2070
`Email: BrettNorth@,gsnn.us
`
`ATTORNEY FOR OPPOSER
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on May 3, 2010, I caused a copy of the foregoing NOTICE OF
`OPPOSITION to be sent via First Class Mail, postage paid, to Applicant, Akrum Alrahib, at the
`correspondence address of 7407 N. 82“ Lane, Glendale, Arizona 85303 (as there is no attorney
`of record).
`
`/Brett A. North #42 040/
`
`P:\ClientFi]es\98\985\98541.48\OPPOSITIONWURPLEKUSHOPPOSITION.wpd
`
`
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF LOUISIANA
`
`CIVIL ACTION
`
`NO. 06-4283
`
`SECTION “J ”
`
`MAG. DIV (3)
`
`*
`
`* *
`
`* *
`
`BLUNT VVRAP U.S.A., INC.
`Plaintiff
`
`VERSUS
`
`"
`DA BOMB PRODUCTS, INC.
`”
`Defendant
`>'€‘:’;'*7'f7‘{7'(**‘3§’k’X'k**7§‘***‘)\‘***’X'*‘k'>V*’k2\‘§¢'>E1r’k*‘k1’:**7§'*’J'¢‘i:*
`
`CONSENT JUDGMENT
`
`Plamtiff, Blunt Wrap U.S.A., Inc. (“Blunt Wrap’ , and Defendant, Da Bomb Products. Inc.
`
`(“Da Bomb”), havmg settled all matters 1n tins CIVII achon as between them, and 8113 action bemg
`
`m condition for entry of a final Consent Judgment as between Blunt Wrap on the one hand and
`
`Defendant on the other hand;
`
`IT IS ORDERED that:
`
`A.
`
`Plamtiff Is the owner of Umted States Trademark Regtstranon No. 3,099,180,
`
`reg1stered May 30, 2006. for “KUSH” for tobacco products and aceessones, namely, cngarettes,
`
`clgals, rolling papexs made out ofpaper and/or tobacco for c1garettes and c1gate, and rolling tobacco
`
`for cxgarettes and c1gars in Class 034, a copy of winch 13 attached hereto as Exhibzt A. This
`
`reg1strat1on Is now valid, subslsttng, uncancelled and unrevoked, and IS based on an Intent to use
`
`application havmg a filing date of August 2, 2004.
`
`B. A
`
`
`
`B.
`
`This Court has j11l'lSdlCt1OIl over this action pursuant to 15 U.S.C. § l12l (actions
`
`arising under the Federal Trademark Act), 28 U.S.C. 1338(a) (acts of Congress relating to
`
`trademarks), 28 USC. l338(b) (pendent unfair competition claims), and 28 U.S.C. § l332(a)
`
`(diversity of citizenship).
`
`C.
`
`Da Bomb Products, Inc, and each oftheir respective owners. shareholders, directors,
`
`officers, employees,manufaeture1S, agents. legal representatives, heirs, successors, and assigns, and
`
`all others in privity or acting in concert therewith, are HEREBY PERMANENTLY ENJOINED
`
`during the term of United States Trademark Registration No. 3,099,180, registered May 30, 2006.
`
`for the trademark “KUSH” from infringing Blunt Wraps trademark registration by using the
`
`trademark “KUSH” for tobacco products and accessories, i.e., cigarettes. Clgars, rolling papers made
`
`ofpaper and/or tobacco for cigarettes, and cigars, and rolling tobacco for cigarettes and cigars and/or
`
`by using any other mark that is confusingly similar thereto.
`
`D.
`
`All claims for reliefplead by Blunt Wrap against Defendant in this civil action, other
`
`than Blunt Wraps claim for permanent lTlju1'lCl1OI1 granted by paragraph B hereof, are HEREBY
`
`DISMISSED WITH PRBJUDICE, each party to bear its own respective costs and attorney's fees in
`
`connection with the prosecution. defense, and disposition of this crvil action.
`
`13.
`
`This Consent Judgment is binding upon all parties to this action, and each of their
`
`respective owners. shareholders, directors, officers, employees, manufacturers, agents,
`
`iegal
`
`representatives, affiliates, subsidiaries, related companies. heirs, successors, and assigns, and upon
`
`those persons in active concert or participation with them who receive actual notice thereof.
`
`
`
`
`
`
`
`Case 2:06-ov—OOO41—CJB—SS Document 47
`
`Filed 07/05/06 Page 1 of18
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF LOUISIANA
`
`BLUNT WRAP U.S.A., TNC.
`
`VERSUS
`
`CIVIL ACTION
`
`NO: O6—4l
`
`AKRUM ALRAHIB, ET AL.
`
`SECTION: "J" (1)
`
`ORDER AND REASONS
`
`Before the Court are complimentary Motions to Dismiss for
`
`Lack of Jurisdiction and improper Venue filed by Da Bomb Products
`
`Inc.
`
`(Rec. Doc. 19) and by Akrum Alrahib and Sunrise Tobacco Inc.
`
`(Rec. Doc. 20). The Court allowed plaintiff some time to conduct
`
`limited discovery on jurisdictional issues. Following discovery,
`
`plaintiff opposed the motions.
`
`(Rec. Doc. 37). Having considered
`
`the motions,
`
`the record evidence,
`
`the memoranda of counsel and
`
`the applicable law,
`
`the Court finds that the motions should be
`
`DENIED.
`
`I. BACKGROUND
`
`Akrum Alrahib is registered with the Arizona Corporation
`
`Commission as the president, statutory agent, sole director, and
`
`sole shareholder of Sunrise Tobacco,
`
`Inc. Mr. Alrahib also
`
`created defendant Da Bomb Products. Mr. Alrahib’s sister Elaine
`
`Alrahib now owns Da Bomb Products. Ms. Alrahib had no prior
`
`EXHBIT B
`
`
`
`Case 2:O6—cv-OOO41—CJB~SS Document 47
`
`Filed 07/05/06 Page 2 of 18
`
`experience creating or running a business. She acquired all of
`
`the shares of ownership for the company from Mr. Alrahib in
`
`exchange for $1.00. Prior to acquiring Da Bomb Products, Ms.
`
`Alrahib had worked for Sunrise Tobacco. Mr. Alrahib lives in
`
`Arizona. Da Bomb Products and Sunrise Tobacco are both registered
`
`in Arizona and have their principal places of business there.
`
`Sunrise Tobacco appointed an attorney in the Eastern
`
`District of Louisiana as the agent
`
`to prosecute many trademarks
`
`for the accused product. Following the transfer of Da Bomb
`
`Products to his sister, Mr. Alrahib assigned to Da Bomb Products,
`
`without compensation,
`
`the trademark applications for the accused
`
`product. Mr. Alrahib manages the promotion 0:
`
`the accused product
`
`for Da Bomb Products, also without compensation. He is registered
`
`as the company's statutory agent for service of process. Either
`
`Mr. Alrahib or an entity he created owns the property out of
`
`which Da Bomb Products operates; He has also registered several
`
`other companies at the same address. Mr. Alrahib, Sunrise
`
`Tobacco, and Da Bomb Products were all sued for patent
`
`infringement.
`
`Plaintiff Blunt Wrap is a Louisiana business that has
`
`patented a tobacco wrapper formed into a hollow cigar—shape so
`
`that it can be stuffed with tobacco. Da Bomb products imports a
`
`
`
`Case 2:06—cv~OOO41—CJB~SS Documeni 47
`
`Filed 07/05/06 Page 3 ONE}
`
`product called “Da Bomb Blunts”, which is accused of infringing
`
`plaintiff's patents.
`
`In August 2005, Mr. Alrahib flew to New
`
`Orleans and handed out flyers at a tobacco distributors trade
`
`show. The flyer advertised that Da Bomb Products was soon to have
`
`available for sale the accused prodact, Da Bomb Blunts. At
`
`the
`
`time, Mr. Alrahib believed that Sunrise Tobacco would be the
`
`exclusive nationwide distributor for the accused product. The
`
`product first became available in the United States and was first
`
`sold soon after the trade show,
`
`in September, 2005. Blunt Wrap
`
`filed suit on January 5, 2006, alleging that defendants
`
`infringed, and induced others to infringe,
`
`its patents.
`
`At an unspecified time, Da Bomb Products contracted with a
`
`distributor in Florida that goes by several names, BBSF and
`
`Borough Hall among them,
`
`to be the exclusive distributor of the
`
`accused product
`
`in the Southeast Region. The distributor
`
`advertises that Louisiana is included within its region of
`
`exclusivity. Da Bomb Products sells the accused product
`
`to the
`
`distributor, and the distributor in turn sells the product to
`
`wholesalers or retailers in its exclusive area. At an unspecified
`
`time,
`
`the accused products began to be offered for sale at
`
`wholesale and retail in the Eastern District of Louisiana. The
`
`evidence of these offers for sale was only obtained after the
`
`
`
`Case 2:O6—cv—OOO41-CJB—SS Document 47
`
`Filed 07/05/06 Page 4 of 18
`
`complaint was filed in this case.
`
`In April of 2006, an
`
`advertisement for the accused product ran in a national magazine
`
`that was delivered to customers in Louisiana.
`
`Defendants have all moved to dismiss the case for lack of
`
`‘I
`
`persona_ jurisdiction and improper venue. Defendants all testify
`
`that they have never made any direct sales in Louisiana and have
`
`never advertised in Louisiana or in a national publication. Mr.
`
`Alrahib testifies in an affidavit that the only time he has been
`
`to Louisiana was on the one occasion of the trade show, when he
`
`handed out flyers advertising the accused product. He testifies
`
`that Sunrise Tobacco has only ever made one direct shipment of
`
`tobacco products to Louisiana. The product was not the one at
`
`'1
`issue in this lawsuit. The shipment was done at the request o;
`
`Borough Hall, which is one name used by Da Bomb Products’
`
`exclusive distributor in the Southeast. Defendants all testify
`
`that they have never had employees, agents, or property in
`
`Louisiana.
`
`A. Preliminary.Matters
`
`II. APPLICABLE LAW
`
`Federal Circuit law governs personal jurisdiction
`
`determinations in patent cases, particularly where a stream of
`
`commerce theory is at issue. Beverly Hills Fan Co. V. Royal
`
`
`
`Case 2:06-cv—OOO41—CJB-SS Document 47
`
`Filed 07/05/06 Page 5 of 18
`
`Sovereign Corp., 21 F.3d 1558, 1564-65 (Fed. Cir. 1994). A court
`
`may assert personal jurisdiction over nonresident defendants if
`
`that assertion is both permitted by the forum state's long—arm
`
`statute and consistent with due process. Elec. For Imaging,
`
`Inc.
`
`V. Coyle, 340 F.3d 1344, 1349 (Fed. Cir. 2003)(citation omitted).
`
`Louisiana's long—arm statute is co~extensive with the reach of
`
`due process,
`
`such that the analysis is collapsed into a one—step
`
`constitutional due process inquiry. Petroleum Helicopters,
`
`Inc.
`
`v. Avco Corp., 834 F.2d 510, 514 (5th Cir. 1987).
`
`Plaintiff bears the burden of establishing that the Court
`
`has the minimum contacts necessary to exercise jurisdiction over
`
`defendants, whereas defendants bear the burden of establishing
`
`that such exercise is unreasonable.
`
`Inamed Corp. V. Kuzmak, 249
`
`F.3d 1356, 1360 (Fed. Cir. 2001). Because the Court's
`
`determination is based on affidavits and other written materials,
`
`and not on an evidentiary hearing, plaintiff need only make a
`
`prima facie showing that the defendants are subject to personal
`
`jurisdiction. Elec. For Imaging, 340 F.3d at 1349.
`
`In the
`
`procedural posture of a motion to dismiss,
`
`this COJIC must accept
`
`as true the uncontroverted allegations in plaintiff's complaint
`
`and resolve factual conflicts in the evidence in plaintiff's
`
`favor.
`
`Id.
`
`
`
`Case 2:06-cv—0OO41-CJB~SS Document 47
`
`Féied 07/05/06 Page 6 of 18
`
`B. Personal Jurisdiction
`
`Asserting personal jurisdiction over nonresident defendants
`
`comports with due process only if they “have certain ‘minimum
`
`contacts’ with the forum ‘such that the maintenance of the suit
`
`does not offend “traditional notions of fair play and substantial
`
`justice.”’ In general,
`
`there must be ‘some act’ by which
`
`defendants ‘purposefully avail[ ]’
`
`themselves of the ‘privilege
`
`of conducting activities within the forum State,
`
`thus invoking
`
`the benefits and protections of its laws.’ Elec. For Imaging, 340
`
`F.3d at 1350 (citing Supreme Court Fourteenth Amendment precedent
`
`and noting its applicability to the Fifth Amendment and its due
`
`process constraints on this Court's exercise of jurisdiction).
`
`There are two routes to the constitutional minimum necessary
`
`to exercise jurisdiction over nonresident defendants. Where the
`
`defendant has continuous and systematic contacts with the forum
`
`state,
`
`the defendant has submitted to the general jurisdiction of
`
`the Court even if those contacts are not related to the cause of
`
`action.
`
`Id. at 1349. Even where general jurisdiction is lacking,
`
`the Court can assert specific jurisdiction where nonresident
`
`defendants purposefully direct their activities at residents of
`
`the forum and the litigation results from alleged injuries that
`
`arise out of or relate to those activities. Akro Corp. V. Luker,
`
`
`
`Case 2:O6~c:v—OOO41—CJB-SS Document 47
`
`Filed 07/05/06 Page 7 of 18
`
`45 F.3d 1541, 1545 (Fed. Cir. 1995). To establish specific
`
`jurisdiction,
`
`the Court must satisfy itself that the defendant
`
`purposefully directed its activities at residents of the forum,
`
`:hat the claim arises out of or relates to those activities, and
`
`ihat the assertion of personal jurisdiction is reasonable and
`
`fair.
`
`Id. at 1545-46.
`
`C. Venue
`
`Venue in patent cases is controlled by 28 U.S.C. § l400(b),
`
`which provides: “Any civil action for patent
`
`infringement may be
`
`brought
`
`in the judicial district where the defendant resides, or
`
`where the defendant has committed acts of infringement and has a
`
`regular and established place of business.” A corporate defendant
`
`is deemed to reside in any district in which it is subject to
`
`personal jurisdiction.” See Trintec Indus.,
`
`Inc. V. Pedre
`
`Promotional Prod., Inc., 395 F.3d 1275, 1280 (Fed. Cir. 2005).
`
`Thus,
`
`for corporate defendants venue need not be considered
`
`separately from personal jurisdiction.
`
`Id.
`
`III . DISCUSSION
`
`A. Sales.After the Complaint
`
`An initial issue to be addressed in determining the
`
`existence of personal jurisdiction over defendants concerns the
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`timing of the contacts with this forum. Defendants argue that the
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`
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`Case 2:06—cv—OO041—CJB—SS Document 47
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`Filed 07/05/06 Page 8 of 18
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`advertising and sales of the accused product that occurred after
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`the filing of the complaint cannot be considered in the
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`jurisdictional analysis. However,
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`the Court views the entire
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`alleged sequence of actions taken when the complaint was filed as
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`one continuous infliction of injury. The sales and advertisement
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`concern the exact product and allegations made in the complaint.
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`Plaintiff has alleged that “Defendants will continue to infringe
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`the Patents in Suit,” that the “unlawful infringing actions have
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`had and continue to have the effect of damaging Blunt Wrap
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`U.S.A.,” and that “Defendants fully intend to continue such
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`various infringing acts and conduct.” Compl. at flfl 15, 16,
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`l8.
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`The sales and advertisement of the accused product following the
`
`Complaint are part and parcel of the conduct about which
`
`plaintiff sues. Federal Circuit precedent embraces this
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`understanding of the issue. “In a case involving a continuous
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`tort, it would be arbitrary to identify a single moment after
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`which defendant's contacts with the forum necessarily become
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`irrelevant to the issue of specific jurisdiction.” Beverly Hills
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`Fan, 21 F.3d at 1564. It is not appropr’ate for this Court
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`to
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`turn a blind eye to the continuing nature of the alleged conduct
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`in these circumstances.
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`Case 2:O6—cv-OO041—CJB—SS Document 47
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`Filed 07/05/06 Page 9 of 18
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`B. Personal Jurisdiction
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`1. Da Bomb Products
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`Considering all of the evidence presented,
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`the Court finds
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`the determination of personal jurisdiction over Da Bomb Products
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`an easy one. Mr. Alrahib, either as head of promotions for Da
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`Bomb Products or as director of Sunrise Tobacco or as both,
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`flew
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`to New Orleans for a tobacconists trade show. There he handed out
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`a flyer advertising the accused product,
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`imported and sold by Da
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`Bomb Products. Although Ms. Alrahib swears in her affidavit that
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`Da Bomb has never advertised in Louisiana, sent any agent here,
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`or sent any marketing materials to Louisiana residents,
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`that
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`testimony is directly contradicted by the admitted facts above.
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`The flyer is obviously very targeted advertising in the state,
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`and Mr. Alrahib is a registered agen: of Da Bomb Products.
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`Defendants make much of the fact that the flyer lacks a price,
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`arguing from that fact tha: it cannot be an offer to sell. Even
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`assuming the correctness of this argument,
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`the trip to New
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`Orleans and the flyer are still significant, first as an
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`indication of the nature of Da Bomb Product's contact with
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`Louisiana, and second in relation to the inducement
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`to infringe
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`claim.
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`In addition, plaintiff has attached the affidavit of Keith
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`
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`Case 2:06-cv-00041-CJB-SS Document 47
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`Filed 07/05/06 Page 10 of 18
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`Scott who attended the trade show and who swears that he
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`personally witnessed Mr. Alrahib offering to sell the accused
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`product
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`in addition to handing out
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`the flyer. There is no
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`statement by either Da Bomb Products or Mr. Alrahib that ei:her
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`has never offered the product for sale in Louisiana.
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`In fact, Mr.
`
`Alrahib testified that although he could not recall making an
`' L’
`offer to sell, ii someone testified to the contrary it might
`
`refresh his recollection. Even if the careful statement of Mr.
`
`Alrahib,
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`that he “did not provide any price at which the new
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`product could be purchased in the future,” is meant to convince
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`the Court that no offers to sell were made,
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`factual conflicts
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`must be resolved in favor of the party asserting jurisdiction.
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`Defendants would like the Court to make a merits—based decision
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`about whether an offer to sell was made at the trade show, but
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`such a ruling is inappropriate and unnecessary at this time.
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`The magazine advertisement of the accused product that was
`
`sent to Louisiana following initiation of the suit adds a
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`further, not insignificant, Contact to the analysis. See Keeton
`
`V. Hustler Magazine, Inc., 465 U.S. 770, 774-75 (1984). However,
`
`the most significant contact is obviously the purposeful shipment
`
`of the product to Louisiana through Da Bomb Product's exclusive
`
`distributor for the Southeast,
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`so that it could be sold here.
`
`10
`
`
`
`Case 2:O6—cv-OOO41—CJB—SS Document 47
`
`Filed 07/05/06 Page 11 of 18
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`“The allegations are that defendants purposefully shipped the
`
`accused {product} into [the state] through an established
`
`distribution channel. The cause of action for patent infringement
`
`is alleged to arise out of these activities. No more is usually
`
`required to establish specific jurisdiction.” Beverly Hills Fan,
`
`21 F.3d at 1555 (citing Burger King V. Rudzewicz, 471 U.S. 462,
`
`472-73 (1985); Keeton, 465 U.S. at 774-75 (1984). Despite the
`
`evasiveness of her answers, Ms. Alrahib’s deposition testimony
`
`eventually indicates that she was aware that her distributor had
`
`the exclusive right and advertised intent to sell the accused
`
`product in Louisiana. This is not a case where a “Da Bomb Blunt”
`
`was sold to a customer in Arizona and then that third party
`
`unilaterally brought it into Louisiana and infringed plaintiff's
`
`patent. Here, Da Bomb Products sells the accused product
`
`to its
`
`exclusive distributor, for the purpose of having it sold in
`
`Louisiana as well as the other Southeastern states in the
`
`distributor's exclusive territory. Although Ms. Alrahib declares
`
`that “Da Bomb has never directly sold any product
`
`to a customer
`
`in Louisiana,” the minimum contacts requirement is satisfied when
`
`a corporation “delivers its products into the stream of commerce
`
`with the expectation that they will be purchased by consumers in
`
`the forum State.” World~Wide Volkswagen Corp. V. Woodson, 444
`
`ll
`
`
`
`Case 2:O6»cv—0OO41—CJB—SS Document 47
`
`Filed 07/05/06 Page 12 of 18
`
`U.S. 286, 298 (1980). “Direct” sales are not a prerequisite.
`
`Da Bomb Products does not present the extraordinary case
`
`where, although minimum contacts exist, considerations of
`
`fundamental fairness nevertheless dictate that jurisdiction is
`
`improper. To violate due process the burden on the defendant must
`
`be so great that it clearly outweighs the forum state's interest.
`
`Louisiana has a substantial interest in deterring patent
`
`infringement within its borders and in providing a means of
`
`redress to its citizens injured by infringement occurring here.
`
`Against these interests, Da Bomb Products argues simply that the
`
`company, along with i:s employees and records,
`
`is located in
`
`Arizona. The Court finds that the inconvenience to Da Bomb
`
`Products is not so substantial as to violate due process.
`
`2. Akrum Alrahib
`
`Mr. Alrahib argues that because he never offered to sell Da
`
`Bomb Blunts in Louisiana, his one visitito the state to attend a
`
`trade show and hand out flyers cannot support jurisdiction. As
`
`noted above,
`
`the evidence is conflicting as to whether or not Mr.
`
`Alrahib offered to sell the accused product.
`
`In addition,
`
`the
`
`Court does not consider the act of flying into the forum state
`
`and conducting targeted marketing of a product alleged to
`
`infringe a local company's patents to be as insignificant as
`
`12
`
`
`
`Case 2:06-cv—OOO41-CJB-SS Document 47
`
`Filed 07/05/06 Page 13 of 18
`
`defendants seem to feel. Plaintiff complains of inducement
`
`to
`
`infringe as well as direct infringement. Title 35 U.S.C. § 27l(b)
`
`provides that “[w]hoever actively induces infringement of a
`
`patent shall be liable as an infringer.” Cases analyzing this
`
`section have read a requirement of knowledge or intent into this
`
`provision, although direct proof of knowledge is not necessary.
`
`See Water Techs. Corp. V. Calco, Ltd., 850 F.2d 660, 668 (Fed.
`
`Cir. 1988). Construing doubts in plaintiff's favor,
`
`the evidence
`
`before the Court
`
`indicates that plaintiff may be able to prove
`
`that Mr. Alrahib had not only knowledge but intent to induce
`
`others to infringe plaintiff's patents. Even an isolated act can
`
`support jurisdiction if it creates a substantial connection to
`
`the forum and makes it reasonably foreseeable that the actor
`
`could face litigation in the forum. Burger King; 471 U.S. at 475
`
`n.l8; Silent Drive,
`
`Inc. V. Strong Indus., Inc., 326 F.3d ll94,
`
`1200 (Fed. Cir. 2003). Mr. Alrahib's alleged conduct at
`
`the trade
`
`show creates the requisite connection and foreseeability.
`
`Mr. Alrahib gives no indication in what capacity he attended
`
`the trade show. As developed more thoroughly below with regard to
`
`venue, Mr. Alrahib can be identified with Da Bomb Products and
`
`with Sunrise Tobacco for purposes of the motions before the
`
`Court. Accordingly, his actions are attributable to him
`
`13
`
`
`
`Case 2:06-cv—OOD41—CJB-SS Document47
`
`Filed 07/05/06 Page 14 of 18
`
`individually and to the corporations with which he is identified.
`
`The allegations in the complaint and supporting affidavits, as
`
`well as Mr. Alrahib’s own testimony lead this Court
`
`to find that
`
`personal jurisdiction exists as a result of Mr. Alrahib’s single
`
`visit to the trade show.
`
`Mr. Alrahib’s argument that an assertion of personal
`
`jurisdiction over him would impose an unconstitutional burden is
`
`basically the same as Da Bomb Products’. He lives and works in
`
`Arizona. As with Da Bomb Products,
`
`the Court finds that the forum
`
`state's interest in this matter is not clearly outweighed by the
`
`burden on Mr. Alrahib such that it would violate due process to
`
`require him to litigate here.
`
`3. Sunrise Tobacco
`
`Sunrise Tobacco has only made one direct shipment of an
`
`unrelated tobacco product
`
`to Louisiana. The shipment was not made
`
`pursuant to a contract with ties to Louisiana, but was made at
`
`the request of Da Bomb Products’ exclusive distributor in the
`
`Southeast. The lawsuit does not arise out of that shipment and
`
`the shipment is clearly insufficient to support general
`
`jurisdiction against Sunrise Tobacco.
`
`However, Mr. Alrahib testifies that when he went
`
`to the
`
`trade show in New Orleans he had planned for Sunrise Tobacco to
`
`14
`
`
`
`Case 2:O6—cv-0OO41—CJB-SS Document 47
`
`Filed 07/05/06 Page 15 of18
`
`be the nationwide distributor for the accused product. Sunrise
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`Tobacco had apparently retained an attorney here in the Eastern
`
`District of Louisiana to execute numerous trademark application
`
`for the accused product. It seems clear that Mr. Alrahib was
`
`acting on behalf of Sunrise Tobacco, as well as Da Bomb Products,
`
`when he promoted the accused product
`
`in this district. Thus his
`
`actions support jurisdiction over the corporation whose interest
`
`he represented. See Dainippon Screen Mfg. Co. V. CFMT, Inc., 142
`
`F.3d 1266, 1270 (Fed. Cir. 1998)
`
`(demonstrating how corporate
`
`agents wearing “two hats” can bind more than one corporation).
`
`C. Venue
`
`Residence is established and venue is appropriate for a
`
`corporate defendant wherever personal jurisdiction lies. Trintec
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`Indus., 395 F.3d at 1280. Therefore, Da Bomb Products and Sunrise
`
`Tobacco’s Motion to Dismiss for Improper Venue is denied based
`
`upon the above personal jurisdiction analysis.
`
`_
`
`Mr. Alrahib is sued individually. For individuals,
`
`residence
`
`is based on domicile, not on personal jurisdiction. Here, it is
`
`undisputed that Mr. Alrahib is a domiciliary of Arizona. And
`
`although he is alleged to have infringed plaintiff's patents in
`
`the Eastern District of Louisiana,
`
`the record evidence indicates
`
`that Mr. Alrahib has no regular and established place o: business
`
`15
`
`
`
`Case 2:O6—cv~OOO41—CJB—8S Document 47
`
`Fiied 07/05/06 Page 16 of 18
`
`in this district. So, neither alternative for establishing proper
`
`venue under 28 U.S.C.
`
`§ l400(b)
`
`in this district applies on its
`
`face.
`
`However,
`
`if the individual is an alter—ego of the business,
`
`“venue for personal liability of a corporate officer/owner for
`
`acts of infringement by the corporation, whether or not
`
`the facts
`
`support piercing the corporate veil, may reasonably be based on
`
`the venue provisions for the corporation.” Hoover Group, Inc, V.
`
`Custom Metalcraft, Inc.,
`
`84 F.3d 1408,
`
`l4lO (Fed. Cir. 1996).
`
`In
`
`Hoover Group the district court found venue proper for an
`
`individual without distinguishing between infringement and
`
`inducement to infringe and without actually piercing the
`
`corporate veil. The Federal Circuit held that allegations that
`
`the individual was the president, CEO, principal shareholder, and
`H
`sole decision—maker were sufficient to support the propriety 0;
`
`Venue.
`
`Plaintiff complains that Da Bomb Products and Sunrise
`
`Tobacco are merely paper shields created to avoid an injunction
`
`issued previously by this Court, and that Mr. Alrahib
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