Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1127271
`04/15/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92076319
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
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`Attachments
`
`Plaintiff
`Airrosti Rehab Centers, LLC
`
`WILLIAM B. NASH
`HAYNES AND BOONE, LLP
`2323 VICTORY AVENUE, SUITE 700
`DALLAS, TX 75219
`UNITED STATES
`Primary Email: ipdocketing@haynesboone.com
`Secondary Email(s): Bill.nash@haynesboone.com,
`jason.whitney@haynesboone.com, venisa.dark@haynesboone.com,
`lori.lapidario@haynesboone.com, eva.martinez@haynesboone.com
`210-978-7477
`
`Other Motions/Submissions
`
`Alexander B. Lutzky
`
`alex.lutzky@haynesboone.com, bill.nash@haynesboone.com,
`jason.whitney@haynesboone.com, venisa.dark@haynesboone.com,
`eva.martinez@haynesboone.com
`
`/Alexander B. Lutzky/
`
`04/15/2021
`
`2021-04-15 Airrosti Response to Arriste Motion to Suspend Proceeding pending
`Civil Action.pdf(1082250 bytes )
`
`

`

`
`
`In re:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Reg. No. 5985519
`Mark: ARRISTE
`
`
`
`
`Airrosti Rehab Centers, LLC,
`Petitioner
`
`
`v.
`
`Arriste LLC,
`Respondent
`
`
`
`
`Cancellation No.
`
`92076319
`
`
`
`
`
`RESPONSE TO ARRISTE, LLC’S MOTION TO SUSPEND PROCEEDING PENDING
`CIVIL ACTION
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`The Board should deny Respondent Arriste LLC’s (“Arriste” or “Respondent”) Motion
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`to Suspend Proceedings Pending Civil Action filed on March 26, 2021 (ESTTA1123158) for
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`lack of good cause. Good cause does not exist for at least three reasons. First, judicial economy
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`is not well served by a suspension since the TTAB proceeding will reach a decision on the merits
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`sooner than the federal district court. Second, the court in the civil action does not have
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`jurisdiction over Petitioner Airrosti Rehab Centers, LLC (“ARC” or “Petitioner”). Third,
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`suspending the proceedings unduly prejudices Petitioner as the fraud counterclaim filed against
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`Petitioner’s U.S. Registration 4,237,801 (“the ‘801 Registration”) in this proceeding is not at
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`issue in the civil action. Accordingly, the Board should deny the Motion and allow this
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`Cancellation proceeding to resume.
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`I.
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`Legal Standards for Suspension of Inter Partes Trademark Proceedings
`
`Pursuant to Trademark Rule 2.117, proceedings may be suspended when it comes to the
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`attention of the Board “that a party or parties to a pending case are engaged in a civil action”
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`4824-9115-3892 v.2
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`“which may have a bearing on the case.” 37 C.F.R. § 2.117(a); New Orleans Louisiana Saints
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`LLC v. Who Dat?, Inc., 99 U.S.P.Q.2d 1550, 1552 (T.T.A.B. 2011). In the past, the primary
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`consideration in suspending TTAB proceedings was that “[a] decision by the district court
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`[would] be binding on the Board whereas a determination by the Board as to a defendant’s right
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`to obtain or retain a registration would not be binding or res judicata in respect to the proceeding
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`pending before the court.” New Orleans Louisiana Saints, LLC, 99 U.S.P.Q.2d at 1552
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`(T.T.A.B. 2011); accord TBMP § 510.02(a) (3d ed. rev. 2, June 2013) (“[T]he decision of the
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`Board is not binding upon the court.”).
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`But B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S.Ct. 1293 (2015), overturned
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`the long-standing rule that the Board’s decisions could not have preclusive effect on a district
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`court case. Consequently, a key rationale for suspending TTAB proceedings before the 2015
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`B&B Hardware opinion—that TTAB decisions were never given preclusive effect—no longer
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`applies. Instead, a federal district court may now be bound by findings of the TTAB. B&B
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`Hardware, 135 S. Ct. at 1310.
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`Suspension of a TTAB proceeding is solely within the discretion of the Board and is
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`subject to a ‘good cause’ standard. The Other Telephone Co. v. Connecticut Nat’l Telephone
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`Co., Inc., 181 U.S.P.Q. 779, 782 (Comm’r Pat. 1974); Nat’l Football League v. DNH
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`Management LLC, 85 U.S.P.Q.2d 1852, 1855, n.8 (T.T.A.B. 2008). “[B]oth the permissive
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`language of Trademark Rule 2.117(a) . . . and the explicit provisions of Trademark Rule 2.117(b)
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`make clear that suspension is not the necessary result in all cases.” Jodi Kristopher Inc. v. Int’l
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`Seaway Trading Corp., 91 U.S.P.Q.2d 1957, 1958 (T.T.A.B. 2009), quoting Boyds Collection
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`Ltd. v. Herrington & Co., 65 U.S.P.Q.2d 2017, 2018 (T.T.A.B. 2003).
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`II.
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`Good Cause Does Not Exist to Suspend the Cancellation Proceedings
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`Good cause does not exist to suspend the existing proceeding as judicial economy would
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`not be served, the asserted federal district court does not have jurisdiction over Petitioner, and
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`Petitioner will be unduly prejudiced by a suspension as the claims between the Cancellation and
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`district court action are not the same.
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`a. Judicial Economy is Not Served by a Suspension of the Proceedings
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`The central issue in this proceeding is the damage to Petitioner’s incontestable trademark
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`registrations for the mark “AIRROSTI” caused by Respondent’s trademark registration No.
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`5,985,519 (“the ‘519 Registration”) for the mark “ARRISTE”. See (Petition for Cancellation,
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`ESTTA1111564, at 8) (“Airrosti Rehab Centers, LLC believes it is being damaged by the
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`continued registration of U.S. Registration No. 5,985,519, and respectfully prays for cancellation
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`of that registration.”). In answer, Respondent denied Petitioner’s allegations and filed a
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`Counterclaim seeking cancellation of Petitioner’s asserted and incontestable ‘801 Registration
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`for “clothing, namely t-shirts and hats.” (Answer, Affirmative Defenses and Counterclaim,
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`ESTTA1113648, at 7). On the same day, Respondent also filed a civil action in the U.S. District
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`Court in the Central District of California for a Declaratory Judgement that its ‘519 Registration
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`is valid and it does not infringe Petitioner’s “AIRROSTI” mark. (Respondent’s Motion to
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`Suspend Proceeding Pending Civil Action, ESTTA1123158, Ex. 1 at 6).
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`Judicial economy is not served by a suspension of the Cancellation proceeding because a
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`decision on the merits in this case will be arrived at sooner by the TTAB than in federal district
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`court. By way of example, prior to Respondent’s Motion to Suspend, the Board issued a
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`scheduling order that provided for the opening of discovery this month, the close of discovery by
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`October 2021, Petitioner’s Opening Trial Brief in June 2022, and Respondent’s Reply Trial Brief
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`by July 2022. (Notice of Institution, ESTTA1111564 at 3). While it is true that the TTAB
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`4824-9115-3892 v.2
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`proceedings have been temporarily suspended pending the outcome of Respondent’s motion, in
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`contrast, there is no current scheduling order in the case in the Central District of California, and
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`as explained infra, nor is there likely to be a scheduling order in the near future.
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`Further, unlike this proceeding, the declaratory judgment action filed by Respondent
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`Arriste in the federal district court does not include an allegation that ARC’s ‘801 Registration is
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`invalid due to fraud. ARC relies on the ‘801 Registration in part in making its likelihood of
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`confusion allegations against the ‘519 Registration in this proceeding. As such, Respondent’s
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`fraud Counterclaim will still need to be litigated, even assuming the civil action proceeds
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`forward, resulting in an unnecessary duplication of efforts for both parties.
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`In sum, judicial economy is better served by allowing the TTAB proceeding to move
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`forward for three reasons. The parties are likely to obtain a decision on the merits quicker at the
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`TTAB forum than the district court, and Respondent’s fraud Counterclaim must still be litigated
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`at the TTAB. And finally, Respondent made the uses identified under the ‘519 Registration an
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`issue
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`in
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`the district court
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`litigation.
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` Compare (Respondent’s Motion
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`to Suspend,
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`ESTTA1123158, Ex. 1 at 4, ¶ 12) (stating the covered goods of the ‘519 Registration), with
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`(Motion to Suspend, Ex. 1 at 7, ¶¶ 29, 32) (alleging the ‘519 Registration is valid and that a
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`controversy exists over the use of the mark on its goods). Because the Respondent alleged in the
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`civil action that its use is materially the same as the usage in the ‘519 Registration, a decision by
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`the TTAB will have a preclusive effect on the civil action. See B&B Hardware, Inc. v. Hargis
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`Industries, Inc., 135 S.Ct. 1293, 113 U.S.P.Q.2d 2045, 2055-56 (2015) (“[W]hen the usages
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`adjudicated by the TTAB are materially the same as those before the district court, issue
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`preclusion should apply.”). Thus continuing with the proceeding at the TTAB will result in a
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`more efficient resolution of the controversy between the parties. TBMP § 510(a) (noting judicial
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`economy is a consideration in deciding on suspension of proceedings).
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`b. District Court in Civil Action Has No Jurisdiction to Hear the Case
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`Good cause also does not exist here as the federal district court in California does not
`
`have jurisdiction over ARC to hear the case filed by Respondent. On Friday, April 9, 2021 ARC
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`filed a Motion to Dismiss the civil action under Federal Rule of Civil Procedure 12. (Ex. 1,
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`Motion to Dismiss Plaintiff’s Complaint, Dkt. 19, Case No. 8:21-cv-00267 (C.D. Cal., Apr. 9,
`
`2021)). At present, the earliest possible date the California court could act would be May 10,
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`2021. (Id. at 1). Thus, any progress in the district court case will be delayed. Even if the court
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`eventually rules that it has jurisdiction, the process to come to that conclusion may take several
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`months, potentially including appeal to the Ninth Circuit that would lengthen the time to a
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`decision. In contrast, the TTAB proceedings can be resumed quickly, and should be resumed to
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`enable discovery, including discovery related to Respondent’s Cancellation Counterclaim.
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`c. Suspension Unduly Prejudices Petitioner Considering the Counterclaim of
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`Fraud Filed by Respondent
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`As noted previously, unlike in the district court case, in the present proceeding
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`Respondent filed a Cancellation Counterclaim against ARC’s ‘801 Registration, which is one of
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`its asserted registrations. While the ‘801 Registration is incontestable, Respondent alleges fraud
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`on the USPTO in filing the initial application. (Counterclaim, ESTTA1113648, at 6-7).
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`Respondent did not file for Cancellation of any of Petitioner’s registrations in the district court
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`action. (Motion to Suspend Proceeding, ESTTA1123158, Ex. 1 at 6-8).
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`Suspension of this proceeding thus unduly prejudices Petitioner in two ways. First,
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`assuming the district court ultimately retains jurisdiction, which is unlikely, and then eventually
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`makes a decision on the merits in the civil action, its decision will not resolve Respondent’s
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`4824-9115-3892 v.2
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`fraud Counterclaim made against ARC’s ‘801 Registration in this proceeding. Petitioner has
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`already been prejudiced, and will continue to be prejudiced, by suspension of the proceedings as
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`title and enforceability of its ‘801 Registration is clouded by the fraud allegation, a cloud that
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`ARC cannot disperse with the proceedings suspended.
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`Second, ARC relies on the ‘801 Registration in its Cancellation Petition. See (Petition for
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`Cancellation, ESTTA1111564, at ¶¶ 17, 22, 31) (“ARRISTE and the AIRROSTI Mark are used
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`in connection with identical goods, including without limitation t-shirts and hats.” (emphasis
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`added)). The ‘801 Registration is critically intertwined into the likelihood of confusion
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`allegations central to this proceeding, and which are at issue in the district court case. But the
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`validity of the ‘801 Registration is not at issue in the civil action. Therefore, in this unusual case,
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`because the fraud counterclaim is not pending in the companion civil action but the validity of
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`the ‘801 Registration has a bearing on the allegations in front of the Board, the civil action does
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`not have a full alignment of issues with the present TTAB proceeding, and good cause does not
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`exist to maintain suspension. See TBMP § 510(a) (referring to unusual circumstances that may
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`preclude suspension of TTAB proceedings).
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`III. Conclusion
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`Good cause does not exist to support suspension of the Cancellation proceeding. To the
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`contrary, suspension contravenes judicial economy because it fails to achieve a timely resolution
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`on all the disputes between the parties, the federal district court does not have jurisdiction to hear
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`the case, and Petitioner will be unduly prejudiced by an inability to defend its asserted ‘801
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`Registration against an allegation of fraud that is not at issue in the civil action. The Board
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`should exercise its discretion allowed for under Trademark Rule 2.117(a) and resume the
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`proceeding.
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`4824-9115-3892 v.2
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`Petitioner Airrosti Rehab Centers, LLC therefore respectfully requests that the Motion to
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`PRAYER
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`Suspend the Proceedings be DENIED and proceedings resumed.
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`
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`
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`Dated: April 15, 2021.
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`
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`Respectfully submitted,
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`
`
`
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`
`
`HAYNES AND BOONE, LLP
`
`
`
` / Alexander B. Lutzky /
`
`William B. Nash
`Email: bill.nash@haynesboone.com
`Jason W. Whitney
`Email: jason.whitney@haynesboone.com
`Alexander B. Lutzky
`Email: alex.lutzky@haynesboone.com
`112 E. Pecan Street, Suite 1200
`San Antonio, TX 78205
`Telephone: 210.978.7411
`Facsimile: 210.978.7450
`
`ATTORNEYS FOR PETITIONER
`AIRROSTI REHAB CENTERS, LLC
`
`
`
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`4824-9115-3892 v.2
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Response to Motion to Suspend
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`Proceedings was served on April 15, 2021, on Arriste’s counsel of record via email to:
`
`Arthur Aaronson
`AARONSON & AARONSON
`16133 Ventura Blvd., Suite 675
`Encino, CA 91436
`Email: art@aaronsonlawcorp.com; david@aaronsonlawcorp.com
`
`
`
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`
`
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`/ Alexander B. Lutzky /
` Alexander B. Lutzky
`
` _
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`4824-9115-3892 v.2
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`EXHIBIT 1
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`EXHIBIT 1
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`

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`Case 8:21-cv-00267-JVS-DFM Document 19 Filed 04/09/21 Page 1 of 11 Page ID #:93
`
`HAYNES AND BOONE, LLP
`Jason T. Lao/Bar No.
` Jason.lao@haynesboone.com
`600 Anton Boulevard, Suite 700
`Costa Mesa, California 92626
`T: (949) 202-3000 | F: (949) 202-3001
`William B. Nash/TX Bar No. (Pro hac vice)
` William.nash@haynesboone.com
`Alexander B. Lutzky/TX Bar No. (Pro hac vice)
` Alex.lutzky@haynesboone.com
`112 E. Pecan St., Suite 1200
`San Antonio, Texas 78205
`T: (210) 978-7000 | F: (210) 978-7450
`
`Attorneys for Defendant
`AIRROSTI REHAB CENTERS, LLC,
`an Oklahoma limited liability company
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA, SOUTHERN DIVISION
`
`Case No. 8:21-cv-00267-JVS-DFM
`
`NOTICE OF MOTION AND
`MOTION OF DEFENDANT
`AIRROSTI REHAB CENTERS,
`LLC TO DISMISS PLAINTIFF’S
`COMPLAINT UNDER FED. R.
`CIV. PROC. 12(b)(2);
`MEMORANDUM OF POINTS
`AND AUTHORITIES IN
`SUPPORT
`
`May 10, 2021
`Date:
`1:30 p.m.
`
`Time:
`10C
`Courtroom:
`Judge: Hon. James V. Selna
`
`[Proposed] Order Lodged
`Concurrently Herewith]
`
`Complaint filed: 02/11/2021
`
`))))))))))
`
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`AIRRISTE LLC, a California Limited
`Liability Company,
`
`Plaintiff,
`
`vs.
`
`AIRROSTI REHAB CENTERS, LLC,
`an Oklahoma Limited Liability
`Company
`
`Defendant.
`
`NOTICE OF MOTION AND MOTION OF DEFENDANT TO DISMISS PLAINTIFF’S
`ORIGINAL COMPLAINT
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`Case 8:21-cv-00267-JVS-DFM Document 19 Filed 04/09/21 Page 2 of 11 Page ID #:94
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`TO THE HONORABLE COURT, TO ALL PARTIES, AND TO THEIR
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`ATTORNEYS OF RECORD HEREIN:
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`PLEASE TAKE NOTICE that, on May 10, 2021, at 1:30 p.m. in Courtroom 10
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`of the United States District Court, Central District of California, Southern Division,
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`located at 411 West 4th Street, Room 1053 Santa Ana, CA, Defendant Airrosti Rehab
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`Centers, LLC (“ARC” or “Defendant”) will enter a special appearance and hereby does
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`move this Court for an order dismissing Plaintiff Arriste LLC (“Plaintiff”) declaratory
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`judgement claims for relief against ARC in Plaintiff’s Complaint pursuant to Federal
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`Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction over ARC.
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`This Motion is made following the conference of counsel pursuant to Local Rule
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`7-3 that took place on March 31, 2021. This Motion is brought pursuant to Federal Rules
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`of Civil Procedure 7 and 12(b)(2). The Motion is based on this Notice, the Memorandum
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`of Points and Authorities submitted concurrently herewith, the papers, pleadings, and
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`records on file herein, including, without limitation, the Complaint, and on such other
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`and further evidence as may be presented at or before the hearing on this matter.
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`DATED: April 9, 2021
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`HAYNES AND BOONE, LLP
`
`
`By:
`
`
`
`/s/ Jason T. Lao
`Jason T. Lao
`Attorneys for Defendant
`AIRROSTI REHAB CENTERS, LLC
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`NOTICE OF MOTION OF DEFENDANT TO DISMISS PLAINTIFF’S ORIGINAL
`COMPLAINT
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`MEMORANDUM OF POINTS AND AUTHORITIES
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`I.
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`INTRODUCTION
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`Plaintiff Arriste LLC (“Plaintiff”) alleges that Defendant Airrosti Rehab Centers,
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`LLC’s (“ARC” or “Defendant”) filing of a Petition for Cancellation with the Trademark
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`Trial and Appeal Board for a single U.S. trademark registration permits the filing of this
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`Declaratory Judgment Action in the Central District of California. In filing the
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`Complaint, Plaintiff alleges the Court has specific personal jurisdiction over out-of-state
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`ARC based on ARC sending two cease-and-desist letters to Plaintiff as well as ARC’s
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`unrelated and de minimus contacts with California.
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`II. FACTUAL AND PROCEDURAL BACKGROUND
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`Plaintiff makes the following allegations in its Complaint. By summarizing the
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`allegations herein, ARC does not admit their truth and contests the factual allegations,
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`even if presumed true for this motion1.
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`On February 10, 2021, Plaintiff filed a complaint for Declaratory Judgment in the
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`Central District of California. The complaint seeks a declaration of validity of Plaintiff’s
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`U.S. trademark registration no. 5,985,519 for “ARRISTE” (“the ‘519 registration”) and
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`that it does not violate ARC’s trademark rights in its “AIRROSTI” trademark.
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`(Complaint, Dkt. No. 1 at ¶ 1.) Plaintiff alleges filing of the complaint “is necessitated”
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`by ARC’s filing a Petition for Cancellation for the Plaintiff’s trademark. (Id. at ¶ 2.)
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`Plaintiff states ARC is an Oklahoma registered limited liability company with its
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`principle place of business located in San Antonio, Texas. (Id. at ¶ 4.) The Complaint
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`alleges the Court has specific personal jurisdiction over ARC based on the following:
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`first, that ARC registered as a Foreign Limited Liability Company in California; and
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`second, that ARC advertised its services on its website to residents of California. (Id. at
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`¶ 6.) Plaintiff also states ARC sent two cease and desist letters to Plaintiff related to the
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`‘519 registration, the first on July 7, 2020 and the second on October 30, 2020. (Id. at ¶¶
`
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`1 ARC disputes Plaintiff’s version of the facts and intends to vigorously assert ARC’s
`contentions that the court lacks personal jurisdiction over ARC.
`
`1
`MOTION OF DEFENDANT TO DISMISS PLAINTIFF’S ORIGINAL COMPLAINT
`
`

`

`Case 8:21-cv-00267-JVS-DFM Document 19 Filed 04/09/21 Page 4 of 11 Page ID #:96
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`
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`16, 19.) Plaintiff also provided the filing number for ARC’s foreign LLC filing in
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`California, (Id. at ¶ 18), yet as will be shown, omitted a key fact germane to the personal
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`jurisdiction inquiry. Following these letters, on February 1, 2021 ARC filed a Petition
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`for Cancellation of the ‘519 Registration. (Id. at ¶ 21.)
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`The Complaint makes two claims for relief: (1) Declaratory Judgment of Validity
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`of the ‘519 Registration; and (2) Declaratory Judgment of Non-Infringement of ARC’s
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`rights in its AIRROSTI trademark. (Id. at ¶¶ 30, 34-35.)
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`III. LEGAL STANDARD FOR GENERAL AND SPECIFIC
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`JURISDICTION
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`In deciding a motion to dismiss under Federal Rule of Civil Procedure 12(b)(2), to
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`exercise personal jurisdiction over a non-resident defendant, “consistent with due
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`process, that defendant must have ‘certain minimum contacts’ with the relevant forum
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`‘such that the maintenance of the suit does not offend ‘traditional notions of fair play and
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`substantial justice.’” Mavrix Photo, Inc. v. Brand Techs, Inc., 647 F.3d 1218, 1223 (9th
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`Cir. 2011) (quoting Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)). The plaintiff
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`bears the burden of showing that personal jurisdiction is proper over the defendant. Id.
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`(citing Boschetto v. Hansing, 539 F.3d 1011, 1015 (9th Cir. 2008)).
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`The Court may only exercise general jurisdiction over a non-resident defendant
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`when the affiliations or contact with the forum state are so continuous and systematic as
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`to render them at home in the forum. Goodyear Dunlop Tires Operations, S.A. v. Brown,
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`564 U.S. 915, 131 S.Ct. 2846, 2851 (2011). These contacts must be of such a degree that
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`they “approximate physical presence” in the forum. Bancroft & Masters, Inc. v. Augusta
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`Nat'l, Inc., 223 F.3d 1082, 1086 (9th Cir. 2000). The standard is an exacting one “because
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`a finding of general jurisdiction permits a defendant to be haled into court in the forum
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`state to answer for any of its activities anywhere in the world.” Schwarzenegger v. Fred
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`Martin Motor Co., 374 F.3d 797, 801 (9th Cir. 2004).
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`The three-prong standard for the exercise of specific personal jurisdiction is
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`similarly exacting and requires that:
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`MOTION OF DEFENDANT TO DISMISS ORIGINAL COMPLAINT
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`Case 8:21-cv-00267-JVS-DFM Document 19 Filed 04/09/21 Page 5 of 11 Page ID #:97
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` (1) The non-resident defendant must purposefully direct his activities or
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`consummate some transaction with the forum or resident thereof; or
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`perform some act by which he purposefully avails himself of the privilege
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`of conducting activities in the forum, thereby invoking the benefits and
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`protections of its laws; (2) the claim must be one which arises out of or
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`relates to the defendant's forum-related activities; and (3) the exercise of
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`jurisdiction must comport with fair play and substantial justice, i.e. it must
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`be reasonable.
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`Mavrix Photo, Inc., 647 F.3d at 1227-28 (9th Cir. 2011) (quoting Schwarzenegger, 374
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`F.3d at 802). Under the first prong, a defendant purposefully directs his activities when
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`he has “(1) committed an intentional act, (2) expressly aimed at the forum state, (3)
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`causing harm that the defendant knows is likely to be suffered in the forum state.” Dole
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`Food Co., Inc. v. Watts, 303 F.3d 1104, 1111 (9th Cir. 2002). The purposeful direction
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`analysis is typically used in cases sounding in tort, including declaratory judgment cases
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`of non-infringement. Schwarzenegger at 802; Krueger v. Adlife Mktg. & Communs. Co.,
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`No. 2:20-cv-07083, U.S. Dist. LEXIS 233624 at *6-7 (C.D. Cal., Dec. 10, 2020) (“In
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`matters seeking a declaratory judgment of non-infringement, courts most often apply the
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`purposeful direction test.”).
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`IV. ARGUMENT
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`The Complaint fails to allege an adequate basis for exercising personal jurisdiction,
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`either general or specific, over ARC. Because of these fatal defects, the Court should
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`dismiss the Complaint for lack of personal jurisdiction under Federal Rule of Civil
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`Procedure 12(b)(2).
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`A. General Personal Jurisdiction Not at Issue in Complaint
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`At the outset, Plaintiff never expressly alleged ARC is subject to general personal
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`jurisdiction in California, only stating that this Court has “specific personal jurisdiction”
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`over ARC. (Complaint, Dkt. No. 1, ¶ 6.) The Complaint only asserts that ARC is “formed
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`under the laws of the State of Oklahoma, having its principal place of business in San
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`MOTION OF DEFENDANT TO DISMISS ORIGINAL COMPLAINT
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`Case 8:21-cv-00267-JVS-DFM Document 19 Filed 04/09/21 Page 6 of 11 Page ID #:98
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`Antonio, Texas.” (Id. at ¶ 4.) Thus, the two paradigmatic bases for general jurisdiction
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`over corporations—the state of incorporation and principal place of business—support
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`the exercise of general jurisdiction in Oklahoma and Texas, respectively, not California.
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`See Goodyear Dunlop Tires Operations, S.A. v. Brown, 131 S.Ct. 2846, 2853-54 (2011)
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`(noting that a corporation is at home in its place of incorporation and principal place of
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`business).
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`During the L.R. 7-3 meet-and-confer held in advance of the filing of this motion
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`and in writing thereafter, Plaintiff confirmed that it is not contending the Court has
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`general personal jurisdiction over Defendant in this case. Accordingly, the Complaint’s
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`allegations do not demonstrate a basis for the exercise of general personal jurisdiction
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`over ARC.
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`B.
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`Specific Personal Jurisdiction Cannot Lie Based on Only Two
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`Demand Letters Sent to Plaintiff and Unrelated Website Contacts
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`Plaintiff erroneously attempts to justify the Court’s exercise of specific personal
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`jurisdiction with allegations that ARC sent trademark cease-and-desist letters to Plaintiff
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`and engaged in other commercial activities directed toward California residents.
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`However, the mere act of sending demand letters, without further enforcement steps in
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`the forum state, is insufficient to support specific jurisdiction in a trademark declaratory
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`judgment action. Additionally, Plaintiff’s validity and non-infringement declaratory
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`judgment claims do not arise from, or relate to, the other alleged commercial activities of
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`ARC related to California. The allegations in the Complaint simply do not support
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`specific personal jurisdiction.
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`i.
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`Merely Sending Cease and Desist Letters Fails to Establish
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`Personal Jurisdiction Over Defendant
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`Under well-established law, ordinary cease-and-desist communications alone,
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`such as those described in Paragraphs 16 and 19 of the Complaint, do not subject ARC
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`to specific personal jurisdiction in California. See Yahoo! Inc. v. La Ligue Contre Le
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`Racisme Et Antisemitisme, 433 F.3d 1199, 1208 (9th Cir. 2006) (“A cease and desist letter
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`4
`MOTION OF DEFENDANT TO DISMISS ORIGINAL COMPLAINT
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`Case 8:21-cv-00267-JVS-DFM Document 19 Filed 04/09/21 Page 7 of 11 Page ID #:99
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`is not in and of itself sufficient to establish personal jurisdiction over the sender of the
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`letter.”); accord C5 Medical Werks, LLC v. CeramTec GMBH, 937 F.3d 1319, 1324 (10th
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`Cir. 2019) (sending trademark “cease-and-desist letter” is not a proper basis for
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`exercising personal jurisdiction); Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1361 (Fed.
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`Cir. 2001) (sending patent “infringement letter” without more is insufficient to exercise
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`jurisdiction over an out-of-state patentee); see also Krueger v. Adlife Mktg. & Communs.
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`Co., U.S. Dist. LEXIS 233624 at *10 n.3 (asserting courts in the Ninth Circuit will not
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`find an ordinary cease and desist letter sufficient to confer personal jurisdiction) (citing
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`Yahoo! Inc., 433 F.3d at 1208); Vacless Sys. v. Vac-Alert Ip Holdings, LLC, No. 2:10-cv-
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`09284-SVW, 2011 U.S. Dist. LEXIS 165002 at *24 (C.D. Cal., Jun. 24, 2011)
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`(“Defendant's cease-and-desist communications, even when coupled with the licensing
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`activities in this case, are insufficient contacts with California”). Courts understand that
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`“[w]arnings and threats of infringement suits are typical in such correspondence,” and
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`consequently such activities are insufficient to give rise to specific personal jurisdiction
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`absent other enforcement steps in the forum. Radio Systems Corp. v. Accession, Inc., 638
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`F.3d 785, 791 (Fed. Cir. 2011).
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`Coupled with sending of cease and desist letters into the forum, additional
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`enforcement steps that might be sufficient to confer specific personal jurisdiction include:
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`traveling to the forum for in-person settlement discussions; filing enforcement suits in
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`California federal district courts; notifying governmental agencies that the alleged
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`infringer is not authorized to sell products; or sending cease and desist letters to the
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`customers of an alleged infringer that result in lost sales. See Xilinx, Inc. v. Papst
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`Licensing GmbH & Co. KG, 848 F.3d 1346, 1357 (Fed. Cir. 2017) (describing forum
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`contacts of in-person settlement discussions and filing of infringement lawsuits);
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`Pesquera v. Perez, No. 20-CV-02128-LHK, 2021 U.S. Dist. LEXIS 14620 *26-27 (N.D.
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`Cal., Jan. 26, 2021) (reciting defendant’s notification of liquor control authorities of
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`allegedly infringing wines); Ath. Trng. Innovations, LLC v. L.A. Gear, Inc., No: 10-1524,
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`2010 U.S. Dist. LEXIS 114294 at *11 (E.D. La., Oct. 18, 2010) (describing defendant
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`5
`MOTION OF DEFENDANT TO DISMISS ORIGINAL COMPLAINT
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`Case 8:21-cv-00267-JVS-DFM Document 19 Filed 04/09/21 Page 8 of 11 Page ID #:100
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`sending letters to accused infringer’s customers, thus intentionally interfering in
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`plaintiff’s business relations).
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`Plaintiff does not allege ARC took, nor did ARC take, any other trademark
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`enforcement acts in California. Since ARC did not take any other enforcement steps
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`which courts have required before finding personal jurisdiction, ARC’s letters alone
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`cannot establish specific personal jurisdiction for the trademark non-infringement and
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`registration validity declaratory judgment claims.
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`ii.
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`ARC’s Unrelated Business Activities Do Not Support Specific
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`Personal Jurisdiction
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`The Complaint also incorrectly asserts that two other business activities of ARC
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`related to California support personal jurisdiction. But as shown below, these are
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`irrelevant and unrelated to Plaintiff’s non-infringement and registration validity
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`declaratory judgment claims.
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`First, Plaintiff alleges that ARC (1) “filed an Application to Register [as] a Foreign
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`Limited Liability Company with the California Secretary of State” on September 22,
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`2020, thus availing “itself of the benefits and protections of” California. (Dkt. 1 at ¶¶ 4,
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`6.) The Complaint thus invokes the “purposeful availment” test which is not applicable
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`to a declaratory
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`judgment action regarding
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`intellectual property enforcement.
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`Schwarzenegger, 374 F.3d 797, 802 (the “purposeful direction” analysis is typically used
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`in cases sounding in tort, including declaratory judgment cases of non-infringement).
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`Furthermore, Plaintiff omitted the material fact that ARC cancelled its entity status
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`with the California Secretary of State on December 17, 2020, almost two months before
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`Plaintiff filed the Complaint. (Lutzky Decl.).2 On December 17, ARC’s “powers, rights
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`and privileges” ceased in California, and following the logic of Plaintiff’s allegations,
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`ARC declared that it was no longer availing “itself of the benefits and protections of” the
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`2 ARC requests the Court take judicial notice of the Business Entity Record for Airrosti
`Rehab Centers LLC, Entity No. 202026710030, which is publicly-available on the
`California Secretary of State website as described in the Declaration of Mr. Lutzky.
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`6
`MOTION OF DEFENDANT TO DISMISS ORIGINAL COMPLAINT
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`

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`Case 8:21-cv-00267-JVS-DFM Document 19 Filed 04/09/21 Page 9 of 11 Page ID #:101
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