United States District Court, N.D. California
For Kaia Foods, Inc, doing business as, Alive & Radiant Foods, Inc., Plaintiff: Michael Lawrence Rodenbaugh, LEAD ATTORNEY, Marie Elizabeth Richmond, Rodenbaugh Law, San Francisco, CA.
For T.J. Bellafiore, Defendant: Defendant, LEAD ATTORNEY, COHEN RICHARDSON, PC, Los Angeles, CA; John Michael Begakis, Cohen and Richardson, Los Angeles, CA.
ORDER GRANTING DEFENDANT'S MOTION TO TRANSFER OR DISMISS
Re: Docket No. 14
JOSEPH C. SPERO, United States Magistrate Judge.
Defendant T.J. Bellafiore, an individual, brings a Motion to Dismiss for Lack of
Venue, or, in the Alternative, to Transfer Venue (" Motion" ) in this trademark infringement action, asserting that venue in this District is improper and that the action should have been brought in the Central District of California. The parties have consented to the jurisdiction of the undersigned United States Magistrate Judge pursuant to 28 U.S.C. § 636(c). For the reasons stated below, the Motion is GRANTED and the action is transferred to the Central District of California.
Plaintiff Kaia Foods, Inc. (" Kaia" ) is based in Oakland, California. Complaint ¶ 4. Kaia and its predecessor-in-interest, Alive & Radiant Foods, " produce and sell healthy, organic snacks, including air-dried, organic vegetable chips." Id. ¶ 6. Plaintiff contends it holds a common-law trademark for KALE IN A KRUNCH and KALE KRUNCH, which it refers to collectively as the " KALE KRUNCH trademark." Plaintiff's Opposition to Defendant's Motion to Dismiss (" Opposition" ) at 2. In particular, Plaintiff alleges in the Complaint that " [a]s early as April 2008, Plaintiff's predecessor-in-interest launched an air-dried organic kale chip product, which it marketed under the KALE IN A KRUNCH trademark." Complaint ¶ 7. Plaintiff further alleges that " [c]urrently, Kale Krunch is available for purchase throughout the United States at numerous health food stores, as well as online at Plaintiff's website and other third-party websites, such as Amazon.com." Id. ¶ 8.
According to Plaintiff, Defendant Bellafiore has knowingly and in bad faith infringed Kaia's trademark. In support of its allegation that Defendant was aware of Kaia's mark, Kaia alleges that " [o]n November 7, 2008, Defendant placed an order for Plaintiff's " Kale in a Krunch" chips via Plaintiff's website; the name on the order was T.J. Bellafiore and included a corresponding email address." Id ¶ 9. Kai further alleges that Defendant registered the domain name " kaleinyourkitchen.com" on December 4, 2010 and the domain name " Kale.krunch.com" on March 18, 2011. Id. ¶ ¶ 10-11. As of March 19, 2011, the Whois record for the latter domain name allegedly listed a mailing address in Culver City, California. Id. ¶ 11.
Kaia alleges that on April 15, 2011, Defendant filed a federal trademark application with the United States Patent and Trademark Office (" USPTO" ) for " KALE KRUNCH" in which Defendant claimed that the mark was " in use" and that the date of first use in commerce was April 15, 2011. Id. ¶ 13. The trademark allegedly was registered on October 22, 2013 with Registration No. 4422321 and the registration lists the owner as T.J. Bellafiore, dba Kale in Your Kitchen, located in Culver City, California. Id. Kaia alleges that Defendant " copied Plaintiff's Kale Krunch recipe and has been marketing kale-based snacks under the KALE KRUNCH trademark online via the domain < kaleinyourkitchen.com=""> ." Id. ¶ 14. According to Kaia, currently that domain " resolves to a website that prominently displays the KALE KRUNCH trademark at the top of the page." Id.
Kaia asserts claims for federal trademark infringement under the Lanham Act, 15 U.S.C. § 1125 (Claim One), violation of the Anti-cybersquatting Consumer Protection Act (" ACPA" ), 15 U.S.C. § 1125(d) (Claim Two) and unfair competition under the California Business and Professions Code, § § 17200 et seq. (Claim Four). Kaia also brings a claim seeking the cancellation of Defendant's trademark registration for the KALE KRUNCH mark on the basis that Defendant allegedly " misrepresented that no other person had the right to use the trademark" 1 (Claim Three).
B. The Motion
Defendant brings a motion seeking dismissal of this action on the basis of improper venue or transfer to the Central District of California, pursuant to Fed.R.Civ.P. 12(b)(3) (authorizing motion to dismiss for improper venue) and 28 U.S.C. § 1406(a) (providing that " [t]he district court of a district in which is filed a case laying venue in the wrong division or district shall dismiss, or if it be in the interest of justice, transfer such case to any district or division in which it could have been brought" ). Defendant T.J. Bellafiore's Motion to Dismiss for Lack of Venue, or, in the Alternative, to Transfer Venue (" Motion" ) at 1. Defendant invokes 28 U.S.C. § 1391(b), governing venue in civil actions, arguing that subsection (1), providing for venue in " a judicial district in which a defendant resides, if all defendants are residents of the State in which the district is located," does not apply because Defendant does not reside in the Northern District of California but rather, in Los Angeles County, in the Central ...