United States District Court, S.D. Florida
ORDER GRANTING MOTION TO DISMISS
RODOLFO RUIZ UNITED STATES DISTRICT JUDGE.
CAUSE comes before the Court on Defendant Asurion,
LLC's Dispositive Motion to Dismiss or Transfer for Lack
of Personal Jurisdiction [ECF No. 16], filed on May 17, 2019.
At issue here is whether Plaintiff's claims for
declaratory judgment of trademark non-infringement arise from
Defendant's conduct pursuant to Florida Statutes section
48.193(1)(a)(1), such that specific personal jurisdiction may
be exercised over an out-of-state Defendant. Having
considered the parties submissions, oral argument on June 12,
2019, the record, and applicable case law, it is
AND ADJUDGED that Defendant's Motion to Dismiss
[ECF No. 16] is GRANTED as set forth herein.
offers complex network and cyber-security services for
businesses seeking to improve their network security
platforms. Compl. ¶¶ 10-15. Defendant provides
technical support services for mobile devices, home
appliances, and consumer electronics under the mark Asurion.
Id. at ¶ 16. While Plaintiff's services are
sold to businesses through managed service providers and
point-of-sales distributors, Defendant directly services
consumers. Id. at ¶¶ 14, 16. Both
Plaintiff and Defendant have trademark registration for their
respective marks. Id. at ¶¶ 15, 18. On
August 30, 2017, Plaintiff petitioned the Trademark Trial and
Appeal Board of the U.S. Patent and Trademark Office to amend
the identification of services listed on its trademark
application (“TTAB Proceeding”). Id. at
¶ 15 n.1. In the TTAB proceeding, Defendant opposed
Plaintiff's application and the parties engaged in
discovery. Id. at ¶ 19; Pl.'s Opp. ¶
March 29, 2019, counsel for Defendant called Plaintiff's
counsel and stated that unless Plaintiff transitioned to a
different name and mark, Defendant would initiate litigation
against Plaintiff. Compl. ¶ 16. On April 4, 2019,
Plaintiff Netsurion, LLC filed a four-count Complaint for
declaratory judgment [ECF No. 1] against Defendant Asurion,
LLC seeking a declaration that its usage and registration of
the Netsurion mark: (1) does not constitute trademark
infringement (Count I); (2) is not likely to dilute
Defendant's Asurion mark (Count II); (3) does not
conflict with Defendant's rights pursuant to 15 U.S.C.
section 1052(d) (Count III); and (4) has not harmed or
damaged Defendant (Count IV). See generally Compl.
17, 2019, Defendant filed a Motion to Dismiss or Transfer for
Lack of Personal Jurisdiction [ECF No. 16]
(“Motion”). Travelling under the mistaken premise
that Plaintiff's Complaint alleges general personal
jurisdiction, Defendant's Motion focuses on
Plaintiff's inability to meet the jurisdictional paradigm
set forth by the United States Supreme Court in Daimler
AG v. Bauman, 571 U.S. 117 (2014). See
generally Def.'s Mot. Dismiss. In support of its
Motion, Defendant submitted the Declaration of Bettie
Colombo, the Senior Director of Corporate Communications for
Asurion [ECF No. 16-1]. In her declaration, Ms. Colombo notes
that Asurion is not incorporated in Florida, has a principal
place of business in Nashville, Tennessee, employs
approximately 4% of its over 19, 000 employees in Florida,
and has two call centers in Florida. Id.
31, 2019, Plaintiff filed its Response in Opposition to
Defendant's Motion [ECF No. 19]
(“Opposition”) alleging that Defendant is subject
to specific personal jurisdiction in Florida. Plaintiff's
Opposition includes two declarations-one by Kevin Watson, the
Chief Executive Officer of Netsurion, LLC [ECF No.19-1] and
another by Anna B. Naydonov, Esq. [ECF No.19-2]-and fifteen
exhibits. In relevant part, the evidence submitted by
Plaintiff demonstrates the following uncontroverted facts:
Asurion employs 4% of its employees in Florida [ECF No.
16-1]; has two call centers, including a 72, 000 square foot
office space in Orlando [ECF No. 19-3]; operates cell phone
repair centers and forward stocking locations in several
cities across the State [ECF Nos. 19-4; 19-5]; promotes its
services and Floridian clients on its website [ECF No. 19-7];
and has eleven subsidiaries registered with the Florida
Department of State [ECF No. 19-10]. In addition, Plaintiff
provided evidence of cease and desist letters sent by
Defendant to two Florida-based entities [ECF No. 19-15].
Reply in Support of Motion [ECF No. 20]
(“Reply”), Defendant advances that it has not
engaged in the type of trademark enforcement activity
necessary to confer the Court with specific personal
jurisdiction in a trademark non-infringement action. In
support of its argument, Defendant submitted the Declaration
of Emily Warth, the Assistant General Counsel for Asurion,
LLC [ECF No. 20-1]. In her declaration, Ms. Warth notes that
Asurion has not engaged in judicial trademark enforcement
activity against Netsurion in the State of Florida, nor filed
any trademark infringement lawsuit against any other party in
the State. Wrath Decl. ¶¶ 3, 5. Defendant also
submitted evidence regarding a previous, unrelated lawsuit
against Asurion [ECF No. 20- 2] and Plaintiff's discovery
requests in the TTAB Proceeding [ECF No. 20-3]. On June 11,
2019, Defendant submitted a Notice of Supplement Authority,
which contained the recently decided Eleventh Circuit case,
Hinkle v. Cirrus Design Corp., No. 18-10404, 2019 WL
2233644, at *1 (11th Cir. May 23, 2019) [ECF No. 21].
parties do not disagree about the aforementioned facts.
Rather, the heart of the jurisdictional dispute centers on
the applicable legal framework used to assess specific
personal jurisdiction in a trademark non-infringement suit.
Plaintiff argues that Buccellati Holding Italia SPA v.
Laura Buccellati, LLC, No. 13-CIV-21297-KMM, 2014 WL
11880964, at *1 (S.D. Fla. Jan. 24, 2014), requires the Court
to find specific personal jurisdiction in light of
Defendant's prevalent commercial use of the Asurion mark
in Florida. Defendant disagrees and advances that
pursuant to United Bully Kennel Club, Inc. v. Am. Bully
Kennel Club, Inc., No. 11-CIV-80682, 2011 WL 13228570,
at *1 (S.D. Fla. Oct. 5, 2011), Plaintiff must demonstrate
that its claims specifically arise out of Defendant's
trademark enforcement activities. As explained below, the
Court rejects both parties' invitations and resolves this
legal issue in favor of Defendant.
withstand a motion to dismiss pursuant to Rule 12(b)(2), a
plaintiff must plead sufficient facts to establish a
prima facie case of jurisdiction over the
non-resident defendant. Diamond Crystal Brands, Inc. v.
Food Movers Int'l, Inc., 593 F.3d 1249, 1257 (11th
Cir. 2010). In considering the adequacy of a plaintiff's
proffer, a district court is constrained to accept
uncontroverted allegations in the Complaint as true and to
resolve factual disputes in the plaintiff's favor.
See Madara v. Hall, 916 F.2d 1510, 1514 (11th Cir.
1990). Where a defendant challenges jurisdiction by
submitting affidavit evidence in support of its position, the
burden shifts back to the plaintiff to produce jurisdictional
evidence. Diamond, 593 F.3d at 1257. Any factual
conflict in the parties' evidence must be construed in
the light most favorable to the plaintiff. PVC Windoors,
Inc. v. Babbitbay Beach Const., N.V., 598 F.3d 802, 810
(11th Cir. 2010).
may assert either general or specific jurisdiction over a
defendant. In Florida, general personal jurisdiction arises
when a defendant engages in “substantial and not
isolated activity” in the State. Fla. Stat. §
48.193(2). There is no allegation here that Defendant Asurion
has sufficient contacts with the State of Florida to properly
invoke general jurisdiction. Therefore, Defendant's Motion
to Dismiss stands or falls on a specific jurisdiction
defendant challenges specific personal jurisdiction, the
plaintiff has the twin burden of establishing that personal
jurisdiction over the defendant comports with the forum
state's long-arm statue, as well as the requirements of
the Due Process Clause. See PVC Windoors, 598 F.3d
at 807. Both prongs of the jurisdictional analysis must be
satisfied for a federal ...