KAIA Foods, Inc. v. Bellafiore

70 F. Supp. 3d 1178, 2014 U.S. Dist. LEXIS 141155, 2014 WL 4966036
CourtDistrict Court, N.D. California
DecidedOctober 3, 2014
DocketCase No. 14-cv-01708-JCS
StatusPublished
Cited by17 cases

This text of 70 F. Supp. 3d 1178 (KAIA Foods, Inc. v. Bellafiore) is published on Counsel Stack Legal Research, covering District Court, N.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
KAIA Foods, Inc. v. Bellafiore, 70 F. Supp. 3d 1178, 2014 U.S. Dist. LEXIS 141155, 2014 WL 4966036 (N.D. Cal. 2014).

Opinion

ORDER GRANTING DEFENDANT’S MOTION TO TRANSFER OR DISMISS

Re: Docket No. 14

JOSEPH C. SPERO, United States Magistrate Judge

I. INTRODUCTION

Defendant T.J. Bellafiore, an individual, brings a Motion to Dismiss for Lack of [1180]*1180Venue, 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. § 686(c). For the reasons stated below, the Motion is GRANTED and the action is transferred to the Central District of California.

II. BACKGROUND

A. Complaint

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.” Plaintiffs Opposition to Defendant’s Motion to Dismiss (“Opposition”) at 2. In particular, Plaintiff alleges in the Complaint that “[a]s early as April 2008, Plaintiffs 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 “[cjurrently, Kale Krunch is available for purchase throughout the United States at numerous health food stores, as well as online at Plaintiffs website and other third-party websites, such as Amazon.com.” Id. ¶ 8.

According to Plaintiff, Defendant Bellaf-iore 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 Plaintiffs “Kale in a Krunch” chips via Plaintiffs website; the name on the order was T.J. Bellafíore 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. Bellafíore, dba Kale in Your Kitchen, located in Culver City, California. Id. Kaia alleges that Defendant “copied Plaintiffs Kale Krunch recipe and has been marketing kale-based snacks under the KALE KRUNCH trademark online via the domain <kaleinyourk-itchen.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” (Claim Three).

[1181]*1181B. 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 District of California. Id. at 6-7.1 Defendant further asserts that subsection (2) does not apply because “a substantial part of the events or omissions giving rise to the claim” did not occur in this district. Id. at 7-9.

In support of the Motion, Defendant Bellafiore has filed a declaration stating that she has been does business in Los Angeles County as “Kale in Your Kitchen” since 2011 and that at all relevant times she is and has been a permanent resident of Los Angeles. Declaration of T.J. Bel-lafiore (“Bellafiore Deck”), ¶ 1, 3, 5. According to Ms. Bellafiore, she sells her kale snacks to “Los Angeles and Palm Springs-based customers in person and through [her] website.” Id. ¶ 4. She states that when an order is placed through her website or directly, she mails or delivers the order in person and therefore, that she has “personal knowledge of the location of every customer who has purchased Kale snacks from her directly or through her website.” Id. ¶ 8. According to Ms. Bellafiore, “[s]ince [she] began [her] business, the majority of [her] sales o'f Kale Snacks have been in person,‘or over the phone, to Los Angeles and Palm Springs-based clientele that [she has] developed” and that she has “never marketed any Kale Snacks to customers in Northern California” and has not “ever sold Kale Snacks directly to customers living in California or the San Francisco area.” Id. ¶¶ 8-9. She further states as follows:

[S]ince I began my business, a much smaller portion of my sales of Kale Snacks have been made through my website, .to my Los Angeles-based clientele. I have never sold Kale Snacks through my website to any customers located in Northern California or the San Francisco' area. I have also never targeted or advertised my website, to any customers located in Northern California or the San Francisco area.

Id. ¶ 11. Finally, Ms.

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70 F. Supp. 3d 1178, 2014 U.S. Dist. LEXIS 141155, 2014 WL 4966036, Counsel Stack Legal Research, https://law.counselstack.com/opinion/kaia-foods-inc-v-bellafiore-cand-2014.