United States District Court, S.D. New York
OPINION AND ORDER
PAUL OETKEN, UNITED STATES DISTRICT JUDGE.
case, a company called Detroit Coffee Company, LLC is suing a
company called Detroit Bold Coffee Co. for trademark
infringement. Defendants move to dismiss or transfer on the
basis of improper venue, arguing that the case should be
litigated in the Eastern District of Michigan, the home of
the city for which both companies are named. For the reasons
that follow, Defendant's motion is granted and the case
Detroit Coffee Company, LLC (“Detroit Coffee”) is
a Michigan limited liability company, with its principal
place of business located at its founder's home office in
New York City. (Dkt. No. 29 (“Compl.”) ¶ 6;
Dkt. No. 34-14 (“O'Neil Decl.”) ¶ 6.)
Detroit Coffee sells coffee products throughout the United
States under the trademark DETROIT COFFEE, which it
registered in 2013. (Compl. ¶¶ 10 14.) Detroit
Coffee alleges that it has continuously used the DETROIT
COFFEE mark in commerce for thirteen years and that its mark
is well known among its customers and throughout the national
coffee market. (Compl. ¶¶ 16-17.)
Coffee brings this action for infringement against Defendant
Soup for You, LLC, doing business as Detroit Bold Coffee Co.
(“Detroit Bold”), a Michigan limited liability
company with its principal place of business in Michigan
(Compl. ¶ 7), and Defendant Allen James O'Neil,
Detroit Bold's founder and sole owner, who resides in
Michigan (Compl. ¶¶ 8, 23). Detroit Bold sells
coffee products using the marks DETROIT BOLD COFFEE COMPANY
DB, DETROIT BOLD COFFEE CO., and DETROIT BOLD. (Compl. ¶
21.) The vast majority of Detroit Bold's sales occur in
the state of Michigan, but the company also makes its coffee
available for sale online. (O'Neil Decl. ¶¶
15-16.) The Complaint alleges that Detroit Bold's marks
are confusingly similar to Detroit Coffee's. (Compl.
¶¶ 37-39, 56, 58-60.)
move to dismiss the Complaint for improper venue, or, in the
alternative, to transfer the case to the Eastern District of
Michigan. They also move to dismiss the Complaint as against
Defendant O'Neil for lack of personal
jurisdiction. (Dkt. No. 31.)
a motion to dismiss for improper venue under Rule 12(b)(3),
the burden of proof lies with the plaintiff to show that
venue is proper.” Cartier v. Micha, Inc., No.
06 Civ. 4699, 2007 WL 1187188, at *2 (S.D.N.Y. Apr. 20,
2007). Unless the court holds an evidentiary hearing,
“the plaintiff need only make a prima facie
showing of [venue].” Gulf Ins. Co. v.
Glasbrenner, 417 F.3d 353, 355 (2d Cir. 2005)
(alteration in original) (quoting CutCo Indus. v.
Naughton, 806 F.2d 361, 364-65 (2d Cir. 1986)). A court
may consider facts outside of the pleadings when resolving a
motion to dismiss for improper venue. See Japan Press
Serv., Inc. v. Japan Press Serv., Inc., No. 11 Civ.
5875, 2013 WL 80181, at *4 (E.D.N.Y. Jan. 2, 2013).
defendant challenges both personal jurisdiction and venue, a
court may consider venue first “when there is a sound
prudential justification for doing so.” Leroy v.
Great W. United Corp., 443 U.S. 173, 180 (1979).
“[W]here personal jurisdiction would likely exist in
the transferee district over a defendant who contests
personal jurisdiction in the Southern District of New York,
it is ‘prudentially appropriate to address venue first
since a decision to transfer would render personal
jurisdiction analysis with respect to [the Southern District]
irrelevant.'” Everlast World's Boxing
Headquarters Corp. v. Ringside, Inc., 928 F.Supp.2d 735,
741 (S.D.N.Y. 2013) (alteration in original) (quoting
Basile v. Walt Disney Co., 717 F.Supp.2d 381, 385-86
Venue in the Southern District of New York
federal venue statute provides that “[a] civil action
may be brought in . . . (1) a judicial district in which any
defendant resides, if all defendants are residents of the
State in which the district is located; [or] (2) a judicial
district in which a substantial part of the events or
omissions giving rise to the claim occurred . . . .” 28
U.S.C. § 1391(b). Because Defendants do not both reside in
New York,  venue is proper in this district only if
“a substantial part of the events or omissions giving
rise to the claim occurred” in the Southern District of
New York. Id.
trademark infringement claims, . . . venue may be proper in
each jurisdiction where infringement is properly alleged to
have occurred.” Pilates, Inc. v. Pilates Inst.,
Inc., 891 F.Supp. 175, 182 (S.D.N.Y. 1995). Infringement
occurs wherever the alleged consumer confusion occurs.
“[I]t is not the assembling of the product and the
affixing of the infringing trademark that controls for
purposes of venue in trademark infringement case, but rather,
it is the marketing and selling of the product.”
Time Prods. v. J. Tiras Classic Handbags, Inc., No.
93 Civ. 7856, 1994 WL 363930, at *9 (S.D.N.Y. July 13, 1994).
demonstrate that a “substantial part” of the
events giving rise to a claim of trademark infringement have
occurred in a particular district, the plaintiff can
demonstrate either substantial sales of the infringing
product in the district or intentional targeting of the
infringing product into the district. See D'Anton
Jos, S.L. v. Doll Factory, Inc., 937 F.Supp. 320, 321
(S.D.N.Y. 1996) (“A substantial part of events occurs
in New York if the defendant targets New York by advertising
and actively pursues efforts to market the infringing product