Machinery Mounting Solutions, Inc. v. American Vulkan Corporation and Hackforth Holding GMBH & Co. KG

CourtDistrict Court, M.D. Florida
DecidedMarch 12, 2026
Docket8:25-cv-02672
StatusUnknown

This text of Machinery Mounting Solutions, Inc. v. American Vulkan Corporation and Hackforth Holding GMBH & Co. KG (Machinery Mounting Solutions, Inc. v. American Vulkan Corporation and Hackforth Holding GMBH & Co. KG) is published on Counsel Stack Legal Research, covering District Court, M.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Machinery Mounting Solutions, Inc. v. American Vulkan Corporation and Hackforth Holding GMBH & Co. KG, (M.D. Fla. 2026).

Opinion

UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA TAMPA DIVISION

MACHINERY MOUNTING SOLUTIONS, INC.,

Plaintiff, v. Case No. 8:25-cv-2672-WFJ-TGW

AMERICAN VULKAN CORPORATION and HACKFORTH HOLDING GMBH & CO. KG,

Defendants. ______________________________________/

ORDER Before the Court is Defendants American VULKAN Corporation (“American VULKAN”) and Hackforth Holding GMBH & Co. KG’s (“Hackforth”) Motion to Dismiss pursuant to Fed. R. Civ. P. 12(b)(2) and 12(b)(6) for lack of personal jurisdiction and failure to state a claim. Dkt. 29. Plaintiff Machinery Mounting Solutions, Inc. (“MMS”) has responded in opposition, Dkt. 36, and Defendants have replied. Dkt. 38. Plaintiff has additionally filed a Motion for Jurisdictional Discovery, requesting leave to conduct limited discovery to establish the Court’s personal jurisdiction over Hackforth. Dkt. 37. After careful consideration, the Court grants Defendants’ Motion to Dismiss pursuant to Fed. R. Civ. P. 12(b)(2) for lack of personal jurisdiction, denies Plaintiff’s Motion for Jurisdictional Discovery, and otherwise dismisses without prejudice Plaintiff’s Complaint for failure to comply with Fed. R. Civ. P. 8(a)(2) and 10(b).

BACKGROUND This dispute arises from the sale of mounting chocks for industrial machinery and their related trademarks. See generally Dkt. 1. Plaintiff MMS is the owner of the

“RotaChock” mark, which is registered with the United States Patent and Trademark Office under Trademark Registration No. 3,817,029. See Dkt. 1-4. The RotaChock is “a device designed to address machinery malfunctions in which a machine’s mounting feet do not sit flat and evenly on its base, causing improper alignment.”

Dkt. 29 at 3. Plaintiff MMS reports that it co-developed the RotaChock with Chock Design B.V., which is owned by the Netherlands-based holding company, Arendse

Management en Beheer B.V. (“Arendse”). Dkt. 1 ¶ 19. Allegedly, Plaintiff MMS has the exclusive rights to market and sell RotaChock products in the United States, whereas Arendse has the exclusive rights to market and sell RotaChock products in international markets. Id. ¶¶ 20–21. However, Arendse is reportedly authorized to

sell RotaChock technology via United States distributors through their “Chock Design” mark, rather than “RotaChock.” Id. ¶ 23. Arendse is the owner of the “Chock Design” mark, which is registered with the United States Patent and

Trademark Office under Trademark Registration No. 6,358,440. See Dkt. 1-5. Defendant American VULKAN is a wholly owned subsidiary of the Germany-based holding company, Defendant Hackforth. Dkt. 29-1 ¶¶ 5–7. In 2018,

Arendse reportedly informed MMS that it intended to utilize Hackforth as a distributor of RotaChock products in international markets and of Chock Design products in the United States market. Dkt. 1 ¶¶ 27, 45. Plaintiff MMS alleges that

instead, Defendants “began unfairly competing with MMS and infringing MMS’s trademark rights to the RotaChock Mark [in the United States market].” Id. ¶ 29. For example, in November 2018, American VULKAN purportedly displayed and distributed brochures advertising RotaChock products at the International

WorkBoat Show in New Orleans, Louisiana. Id. ¶ 30. In January 2019, Plaintiff MMS sent American VULKAN a cease-and-desist letter, instructing it to cease and desist all use of the RotaChock mark and to destroy all materials which utilized the

RotaChock mark. Dkt. 1-6. In February 2019, American VULKAN responded, stating that American VULKAN “is not using the Rota[C]hock mark, nor any similar mark, and that any copies of the Rota[C]hock mark in its possession . . . have been destroyed.” Dkt. 1-7.

Hackforth also maintains a multinational website for American VULKAN and other international VULKAN subsidiaries (the “VULKAN Website”). Dkt. 29-1 ¶ 16; see Dkt. 1-9. The VULKAN Website is allegedly accessible throughout the

United States, including in Florida. Dkt. 1 ¶ 36. Plaintiff MMS reports that on the “Products” tab of the VULKAN Website, RotaChock products such as the BasicLine, Mounting Plate, and SlimLine are advertised under the sub-tab

“Mounts.” Id. ¶ 39–41; see Dkts. 1-10, 1-11, 1-12. However, Plaintiff MMS admits that “Defendants do not directly sell any products they advertise on the VULKAN . . . Website itself, including RotaChock products,” Dkt. 1 ¶ 42, and that instead, “if a

consumer wishes to purchase products that are advertised on the VULKAN . . . Website, he or she must contact [American VULKAN] and/or Hackforth by email, phone call, or by filling out and submitting a ‘Contact Form’ on the VULKAN . . . Website.” Id. ¶ 43.

This is where Plaintiff MMS alleges that a “bait-and-switch” occurs, wherein United States customers contact Defendants seeking RotaChock products after viewing advertisements on the VULKAN Website, but are then referred to Chock

Design products. Id. ¶ 44. Plaintiff MMS contends that Defendants “advertise RotaChock products rather than Chock Design products on the VULKAN . . . Website . . . because RotaChock’s goodwill is stronger, more profitable, and more longstanding than Chock Design’s goodwill and, consequently, drives greater overall

consumer interest in the underlying technology and generates more profits for Defendants.” Id. ¶ 46. In March 2025, Plaintiff MMS sent Hackforth a cease-and-desist letter,

instructing it to “immediately cease and desist all use of the mark ‘ROTACHOCK’ or any confusingly similar mark in all aspects of its business,” and demanding that it provide documentation of their prior use of the RotaChock Mark in commerce and

an accounting of the gross profits Defendants made through their use of the RotaChock Mark. Dkt. 1-13 at 4. Following this, the VULKAN Website was allegedly modified to contain the following disclaimer: “‘RotaChock’ is a trademark

owned by another company (Machinery Mounting Solutions) in the U.S. and is not being used to market products within the U.S. market.” Dkt. 1 ¶ 50; Dkt. 1-14. However, Plaintiff MMS reports that this disclaimer does not appear on the general RotaChock product webpage. Dkt. 1 ¶ 51. Plaintiff MMS further reports that a new

“U.S.” version of the VULKAN Website has been created. Id. ¶ 53. Allegedly, the main VULKAN Website is still accessible in the United States, which still promotes RotaChock products. Id. ¶ 55; see Dkt. 1-15.

On October 1, 2025, Plaintiff filed its Complaint, alleging: Trademark Infringement in violation of the Lanham Act, 15 U.S.C. § 1114(1)(a) (Count I); Unfair Competition in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) (Count II); Trademark Infringement under Florida common law (Count III); and

Unfair Competition in violation of the Florida Deceptive and Unfair Trade Practices Act, Fla. Stat. § 501.204(1) (Count IV). Id. ¶¶ 60–89. Defendants now seek dismissal of Defendant Hackforth per Rule 12(b)(2) for lack of personal jurisdiction and

dismissal of all counts per Rule 12(b)(6) for failure to state a claim. Dkt. 29. DISCUSSION I. Rule 12(b)(2): Lack of Personal Jurisdiction

To establish personal jurisdiction, “the plaintiff must establish a prima facie case of jurisdiction over a non-resident defendant.” Courboin v.

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Machinery Mounting Solutions, Inc. v. American Vulkan Corporation and Hackforth Holding GMBH & Co. KG, Counsel Stack Legal Research, https://law.counselstack.com/opinion/machinery-mounting-solutions-inc-v-american-vulkan-corporation-and-flmd-2026.