Prime Hookah, Inc. v. MK Distributors Inc. et al. (D. Mass. 20-cv-10231).

  • August 11, 2020

Franklin, New Hampshire-based Primal Hardwere filed a declaratory judgment suit against Colorado company Primal Wear, seeking declarations of trademark non-infringement and non-dilution.  Primal Wear makes bicycle and trialethon clothing, and has federal trademark registrations for PRIMAL for a variety of clothing types, as well as for retail clothing store services.  Primal Hardwere was formed in 2013 and sells sex toys and novelty sex items, and also sells t-shirts and other apparel bearing the PRIMAL HARDWERE mark.  In January, Primal Wear sent a cease and desist letter to Primal Hardwere, demanding that they stop using “Primal” and “Hardwere in connection with clothing.  After negotiations failed to resolve the matter, Primal Hardwere filed their declaratory judgment action, which Primal Wear moved to dismiss for lack of personal jurisdiction or to transfer the case to Colorado, where it had filed its own, subsequent trademark infringement suit.

Judge Laplante granted Primal Wear’s motion to dismiss for lack of personal jurisdiction.  He noted that the sending of a cease and desist letter and negotiations regarding the same, absent more, are insufficient to establish specific personal jurisdiction under First Circuit law.  Further, while Primal Wear did sell products into New Hampshire and send advertisements to New Hampshire customers, those contacts with New Hampshire did not arise out of and were unrelated to the declaratory judgment claims, which hinged on the plaintiff’s sales, not the defendant’s sales.  Accordingly, the motion to dismiss for lack of personal jurisdiction was granted.

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