In April, Wedge Water sent a cease and desist letter to Ocean Spray, asserting that Ocean Spray’s “Ocean Spray Wave” branded sparkling, lightly-caffeinated beverages infringed Wedge Water’s “New Wave” trademark and trade dress involving a white can with a wave motif and pictures of fruit and threatening to sue if Ocean Spray did not stop selling under the name and trade dress. In response, Ocean Spray filed suit in Massachusetts, seeking a declaration that it did not infringe Wedge Water’s trademark or trade dress, did not engage in unfair competition, and seeking to cancel Wedge Water’s “New Wave” trademark as likely to cause confusion and as having been obtained through fraud on the Trademark Office. Wedge Water filed suit in California a day later, and moved to transfer the Massachusetts case to Southern District of California.
Judge Wolf noted that Ocean Spray’s choice of forum was not entitled to any significant weight, given that Wedge Water had held off on filing suit in an attempt to negotiate a settlement and Ocean Spray had merely won the race to the courthouse. He determined, however, that Ocean Spray’s actions were not so egregious to deny it its choice of forum. Ocean Spray had not affirmatively misled Wedge Water, and instead had merely not indicated its intention to bring a DJ action prior to filing suit. In considering the other factors relating to a motion to transfer, Judge Wolf determined that the case should remain in Massachusetts. The convenience of the witnesses, which is the most important factor, weighed in favor of the Commonwealth, as Ocean State employees would have the most relevant testimony on whether Ocean State intentionally poached on the New Wave marketing campaign. Wedge Water’s proposed retailer witnesses, moreover, were not necessarily be located in either Massachusetts or Southern California, thus not suggesting either forum.
Interestingly, Judge Wolf discounted arguments regarding personal jurisdiction raised by Wedge Water in a footnote, determining that First Circuit law holds that arguments raised only in a footnote or in a perfunctory manner are waived.
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