IP Law Daily Defending seller had standing to seek cancellation of asserted ‘Sticky Holsters’ mark
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Thursday, April 14, 2016

Defending seller had standing to seek cancellation of asserted ‘Sticky Holsters’ mark

By Thomas Long, J.D.

A Missouri-based seller of holsters for firearms, which had been accused of infringing the registered trademark “Sticky Holsters,” had standing to bring a counterclaim seeking cancellation of the asserted mark, the federal district court in Fort Myers, Florida, has decided (Sticky Holsters, Inc. v. Ace Case Manufacturing, LLC, April 12, 2016, Steele, J.). The court also determined that personal jurisdiction existed over the defending seller’s owner, with respect to a fraud claim based on his alleged misrepresentations that the seller had ceased use of the “Sticky Holsters” mark.

Trademark dispute. Based in Collier County, Florida, plaintiff Sticky Holsters, Inc., made and sold specialized holsters for carrying personal electronic devices and firearms. Sticky Holsters alleged that Franklin County, Missouri-based defendant Ace Case Manufacturing, LLC, engaged in trademark infringement and unfair competition by representing, without authorization, that it manufactured or was authorized to sell holsters bearing the registered “Sticky Holsters” trademark. Sticky Holsters also accused Ace’s owner, Stanley D. Platts, of committing fraud when Ace continued to use “Sticky” and “Sticky Holsters” in its marketing materials and in search engine optimization, after Platts had represented that Ace had discontinued use of the terms in connection with holster sales. Ace filed a counterclaim seeking a declaratory judgment of noninfringement and trademark invalidity, and Platt moved to dismiss the claims against him for lack of personal jurisdiction.

Personal jurisdiction. According to the court, Sticky Holster’s allegation that Platts falsely represented that Ace was not using, and had no intention of using, the term “Sticky” or any confusingly similar phrase in connection with the sale of holsters was sufficient to allege personal jurisdiction under Florida’s long-arm statute. Although Platts denied making this statement, the correspondence at issue was on Platts’s letterhead, contained his name, and was delivered into Florida as an attachment from his email address. Platts also allegedly sent correspondence into Florida on other occasions that contained false representations that Ace had changed the wording on its website and invoices to remove the word “Sticky” and similar terms.

Exercising personal jurisdiction over Platts in Florida would comport with the due process principles of the Fourteenth Amendment, the court determined. The fraud claim arose out of Platts’ contacts with Florida—specifically, his allegedly false statements in correspondence sent to Sticky Holsters in Florida. Platts’s alleged acts satisfied the requirements for finding “purposeful availment.” Any burden on Platts associated with defending himself in Florida was outweighed by the other due process factors, in the court’s view. Therefore, Platts’s motion to dismiss was denied.

Declaratory judgment counterclaim. Sticky Holsters argued that Ace’s claim for declaratory judgment of noninfringement and trademark invalidity was redundant and duplicative of its affirmative defenses. The court disagreed. Within its counterclaim, Ace requested an order cancelling the registered “Sticky Holsters” trademark. This relief could not be awarded by way of its affirmative defenses, the court said.

Sticky Holsters also asserted that Ace lacked standing to seek cancellation of the mark. The court rejected this contention. Ace alleged that it was in competition with Sticky Holsters, that Ace’s use of the adjective “sticky” to describe one type of holsters it offered pre-dated, or was concurrent with, the filing of any application to federally register the mark “Sticky Holsters,” that Sticky Holsters failed to disclose material information out the mark to the USPTO, and that Sticky Holsters had filed suit against Ace alleging trademark infringement and unfair competition. Accordingly, Ace sufficiently alleged standing for its cancellation of trademark claim, and the motion to dismiss the counterclaim was denied.

The case is No. 2:15-cv-00648-JES-CM.

Attorneys: Kevin L. Dees (Schaps & Dees, PA) for Sticky Holsters, Inc. Charles G. Geitner (Hinshaw & Culbertson, LLP) for Ace Case Manufacturing, LLC.

Companies: Sticky Holsters, Inc.; Ace Case Manufacturing, LLC

MainStory: TopStory Trademark FloridaNews

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