Duck Dive LP v. Heydari, No. 13–cv–1477–BTM, 2013 WL 5724050 (S.D. Cal. Oct. 21, 2013).

In a trademark infringement action between two pubs both named “Duck Dive,” the Southern District of California granted the defendant’s motion to transfer the action to the Central District of California, because the Central District better fit the bill.

According to the complaint, the plaintiff owns a “widely-recognized Gastropub/bar/restaurant” named “Duck Dive” in San Diego. The gastrobub opened in March of 2012 and the plaintiff filed an application to register the DUCK DIVE mark on March 27, 2013. One day later, on March 28th, the defendant filed its application to register the mark DUCK DIVE GASTROPUB with an intent to use in commerce. The plaintiff pub filed an opposition to the defendant pub’s application.

Despite the dispute brewing in the Trademark Trial and Appeal Board, the defendant opened its restaurant, located in Malibu, in May of 2013 under the name “Duck Dive Gastropub.” The plaintiff then brings the instant action for trademark infringement in the Southern District of California, the district where the plaintiff was located, instead of the Central District of California, where the defendant was located. The plaintiff claims that venue is appropriate because the Southern District is where a substantial part of the events took place. In support of this argument, the plaintiff cites a website that published an online article claiming the defendant pub was the plaintiff pub’s second location, and the plaintiff claims the article resulted in the plaintiff receiving many phone calls from Malibu residents asking about the new location.

The court, however, disagreed with the plaintiff’s assessment of venue. The Southern District reasoned that the Central District was the proper court to hear the case, as the defendant did not advertise or do any business in the Southern District, the defendant had nothing to do with the online article creating the association with the plaintiff pub, and the potentially confused customers that called were all residents of Malibu, which was in the Central District. Given that a substantial part of the plaintiff’s trademark infringement claim did not occur in the Southern District, the court granted the defendant’s motion to transfer.

Unfortunately for the plaintiff Duck Dive, its argument turned out to be a big goose egg.



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