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David and Lily Penn, Inc. v. Truckpro, LLC

United States District Court, D. Delaware

September 25, 2019

DAVID AND LILY PENN, INC., Plaintiff,
v.
TRUCKPRO, LLC, Defendant.

          Thomas J. Francella, Jr., COZEN O'CONNOR, Wilmington, Delaware; Camille M. Miller, Melanie A. Miller, J. Trevor Cloak, COZEN & O'CONNOR, Philadelphia, Pennsylvania; Attorneys for Plaintiff.

          Timothy Devlin, James M. Lennon, DEVLIN LAW GROUP, Wilmington, Delaware; Attorneys for Defendant.

          MEMORANDUM OPINION

          STARK, U.S. DISTRICT JUDGE

         Pending before the Court is Defendant TruckPro, LLC's ("TruckPro" or "Defendant") motion to transfer venue to the Western District of Tennessee pursuant to 28 U.S.C. § 1404(a). (D.I. 8) For the reasons set forth below, the motion will be denied.

         BACKGROUND

         Plaintiff, David and Lily Perm, Inc. ("Penn" or "Plaintiff), is a tire distribution company that operates in the United States, Canada, and Mexico. (D.I. 1 at ¶ 7) Penn is a Minnesota corporation with a principal place of business in Minnetonka, Minnesota. (D.I. 1 at ¶ 2) TruckPro, which distributes truck and trailer parts and provides truck maintenance and repair services, is a Delaware corporation headquartered in Cordova, Tennessee. (D.I. 9 Ex. A at ¶¶3-4, 16)

         Penn and TruckPro have both used TRUCKPRO trademarks in connection with their products. (D.I. 1 at ¶¶ 7-17) TruckPro challenged Perm's TRUCKPRO trademark before the Trademark Trial and Appeal Board. (D.I. 1 at ¶¶ 11-12) As part of its response, Penn filed suit in this District, seeking a declaratory judgment that: (1) Penn has not infringed TruckPro's TRUCKPRO trademarks under the Lanham Act or Delaware law; (2) Penn has not engaged in unfair competition under the Lanham Act or Delaware law; and (3) TruckPro has abandoned its TRUCKPRO trademarks pursuant to the Lanham Act. (D.I. 1 at ¶¶ 18-38; see also D.I. 15 at 1 ("In light of the imminent threat of litigation posed by Defendant's actions, and after attempting to locate a forum that would be fair for each party, Penn filed a Complaint with this Court.")) Penn also seeks as relief that the Court cancel TruckPro's TRUCKPRO trademarks, pursuant to 15 U.S.C. § 1119. (D.I. 1 at ¶¶ 39-42)

         TruckPro now seeks to transfer venue to the Western District of Tennessee. (D.I. 8) Penn opposes the motion. (D.I. 15) Perm states that it "filed its instant declaratory judgment claims ... in one of only two forums that Penn was certain could exercise personal jurisdiction over Defendant, namely, the District of Delaware." (D.I. 15 at 2) The Court understands the other available District to be the Western District of Tennessee. (See D.I. 18 at 1-2) (TruckPro reply brief stating same)

         LEGAL STANDARDS

         TruckPro brings its motion under 28 U.S.C. § 1404(a), which provides that "[f]or the convenience of the parties and witnesses, in the interests of justice, a district court may transfer any civil action to any other district or division where it might have been brought." The Third Circuit has explained that this provision "was intended to vest district courts with broad discretion to determine, on an individualized, case-by-case basis, whether convenience and fairness considerations weigh in favor of transfer." Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir. 1995).

         Courts evaluating a transfer motion under § 1404(a) must undertake a two-step analysis. First, the Court determines whether the action could have been brought in the proposed transferee forum. See Shutte v. Armco Steel Corp., 431 F.2d 22, 24 (3d Cir. 1970). "The party moving for transfer bears the burden of proving that the action properly could have been brought in the transferee district in the first instance." Mallinckrodt Inc. v. E-Z-Em., Inc., 670 F.Supp.2d 349, 356 (D. Del. 2009) (internal citations omitted).

         Next, the Court must balance the appropriate considerations and determine whether, underthe particular facts of the case, the request to transfer venue should be granted. See Jumara, 55 F.3d at 879. At this step the Court takes particular care to consider at least the private and public interest factors identified by the Third Circuit in Jumara. See Id . at 879-80. The private factors include: (1) "the plaintiffs forum preference as manifested in the original choice;" (2) "the defendant's preference;" (3) "whether the claim arose elsewhere;" (4) "the convenience of the parties as indicated by their relative physical and financial condition;" (5) "the convenience of the witnesses - but only to the extent that the witnesses may actually be unavailable for trial in one of the for trial;" and (6) "the location of books and records (similarly limited to the extent that the files could not be produced in the alternative forum)." Id. at 879 (internal citations omitted). The public interest factors include: (1) "the enforceability of the judgment;" (2) "practical considerations that could make the trial easy, expeditious, or inexpensive;" (3) "the relative administrative difficulty in the two fora resulting from court congestion;" (4) "the local interest in deciding local controversies at home;" and (5) "the familiarity of the trial judge with the applicable state law in diversity cases." Id. at 879-80 (internal citations omitted).

         The Third Circuit has emphasized that "the plaintiffs choice of should not be lightly disturbed." Jumara. 55 F.3d at 879. As a result, "'a transfer is not to be liberally granted." Shutte, 431 F.3d at 25 (internal quotation marks omitted). Consequently, the burden rests squarely on the party seeking transfer "to establish that a balancing of proper interests weighs in favor of the transfer." Id.; see also Jumara, 55 F.3d at 879. That burden is a heavy one: "unless the balance of convenience of the parties is strongly in favor of defendant, the plaintiffs choice of forum should prevail." Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970) (emphasis added). It follows that "transfer will be denied if the factors are evenly balanced or weigh only slightly in favor of the transfer." Angiodynamics, Inc. v. Vascular Sols., Inc., 2010 WL 3037478, at *2 (D. Del. July 30, 2010) (internal citations omitted); see also Ulumina, Inc. v. Complete Genomics, Inc., 2010 WL 4818083, at *2 (D. Del Nov. 9, 2010).

         DISCUSSION

         I. The Western District of Tennessee Is a Proper Venue

         Venue is proper in "a judicial district in which any defendant resides." 28 U.S.C. § 1391(b)(1). The parties do not dispute that TruckPro resides in the Western District of Tennessee. (D.I. 9 at 10; D.I. 15 at 6-8) ...


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