The opinion of the court was delivered by: Crowley, District Judge.
MEMORANDUM OPINION AND ORDER
Gold Eagle Company brought this action against Bernard A. Li
and other partners*fn1 d/b/a Eagle One Industries on April 19, 1979.
The complaint alleges trademark infringement, unfair competition
and false representation. Jurisdiction is asserted under
15 U.S.C. § 1221 and 28 U.S.C. § 1338. Five months later, on
September 12, 1979, Eagle One filed a declaratory judgment action
in the Central District of California. The California action
involves parties and issues identical*fn2 to the Illinois action.
Since both parties agree that the controversy should proceed in
one court, the issue is which court is the proper forum.
Gold Eagle, a manufacturer and distributor of automotive
chemical products, is an Illinois corporation. Its products are
sold under two registered trademarks.*fn3 According to Gold Eagle's
allegations, Eagle One, a California partnership, is selling
similar products under a similar trademark. Eagle One, operating
from its sole place of business in California, sells its products
throughout the United States.
Eagle One supports its motion to stay or transfer with several
arguments. First, it states that although Gold Eagle filed its
action in April, Eagle One was not served until after its
California action was initiated. Eagle One implies that Gold
Eagle filed the original action merely to harass Eagle One and
charges that Gold Eagle did not prosecute its suit diligently
until the second suit was filed. In contrast, Eagle One avers
that its desire for a prompt resolution of the controversy
motivated it to file the second action.
Next, Eagle One claims that California is the district in
which: 1) the defendant resides; 2) where all Eagle One's
business records and witnesses are located; and 3) where the
alleged tort was initially committed. It contends that its
Illinois contacts are de minimus because Illinois sales amount to
less than 1 1/2% of its total sales since February, 1978.
Further, Eagle One asserts that it has no bank accounts, personal
or real property, business offices or employees in Illinois.
Finally, it maintains that because a trademark infringement
action is transitory, proper venue is determined by applying the
"weight of contacts" test and reasons that there is no basis for
venue in the Northern District because only an insubstantial part
of the alleged misconduct occurred here.*fn4 Defendant contends that
the interest of justice can best be
served by staying the Illinois action or transferring it to
In response, Gold Eagle asserts that the controversy should be
tried in the court first acquiring jurisdiction and charges that
the California lawsuit was filed in an attempt to deprive
plaintiff of the right to choose the forum. Gold Eagle alleges
that any delay in the Illinois action was caused, not by its lack
of diligence but by Eagle One's efforts to avoid service.*fn5
Gold Eagle alleges that under 28 U.S.C. § 1391(b) venue is
proper in the Northern District as the place where the claim
arose. It bases its contentions on the fact that Eagle One
advertised in national publications which were circulated here
and sold products, accepted merchandise orders and participated
in an automotive trade show in this district. Additionally, Gold
Eagle alleges that Eagle One distributed business cards at the
trade show listing Chicago as one of its places of business. Gold
Eagle asserts that its choice of forum should not be disturbed
because it filed first and because Eagle One's percentage of
business in Illinois exceeds Gold Eagle's percentage of business
A civil action not founded solely on diversity of citizenship
may be brought in the district where all the defendants reside or
in which the claim arose. 28 U.S.C. § 1391(b). While the meaning
of the word "claim" has not been precisely defined, it is clear
that "the claim should not be deemed to have arisen in a district
in which the defendant has had only miniscule contact . . ."
Honda Associates, Inc. v. Nozawa Trading, Inc., 374 F. Supp. 886,
892 (S.D.N.Y. 1974). Accord Tefal, S.A. v. Products International
Co., 529 F.2d 495 (3rd Cir. 1974). Thus, under Section 1391(b),
venue in a "transitory" cause is proper only in those districts
in which the trademark infringer has had significant activities.
The mere fact that the infringer sent goods or sales literature
bearing the infringing mark into the district cannot be the basis
of venue. See Transamerica Corp. v. Transfer Planning, Inc.,
419 F. Supp. 1261 (S.D.N.Y. 1976).
Eagle One has had more than "miniscule contact" with the
Northern District. Not only has it caused advertisements to be
circulated in this district, but it is undisputed that Eagle One
has negotiated sales, participated in a major trade show and
solicited orders in Chicago. These activities constitute more
than a "mere vestige of venue". Hindu Incense v. Meadows,
439 F. Supp. 844, 847 (N.D.Ill. 1977). See also Dairy Industries
Supply Association v. La-Buy, 207 F.2d 554 (7th Cir. 1953).
Accordingly, venue is proper in the Northern District.
Despite the fact that venue is proper in this district, under
28 U.S.C. § 1404(a), the Court may, in its discretion, transfer
this action to any other district where it might have been
brought for the convenience of the parties and witnesses, in the
interest of justice. A determination of whether transfer is
appropriate requires that equal consideration be given to
availability of compulsory process for attendance of unwilling
witnesses, the cost of obtaining witnesses' attendance, the place
where the wrong occurred, ease and expense of trial and the
pendency of another lawsuit. Coats Co., Inc. v. Vulcan Equipment
Co., Ltd., 459 F. Supp. 654 (N.D.Ill. 1978), Lase Co., Inc. v.
Wein Products, Inc., 365 F. Supp. 911 (N.D.Ill. 1973).
Thus, the interest of justice is the determining factor here.
Absent unusual circumstances, the party filing first should be
free from "the vexation of concurrent litigation." Martin v.
Graybar Electric Co. Inc., 266 F.2d 202 (7th Cir. 1959). Accord,
Ellicott Machine Corp. v. Modern Welding Co., Inc., 502 F.2d 178
(4th Cir. 1974); Galco Food Products, Ltd. v. Goldberg, 171
U.S.P.Q. 379 (N.D.Ill. 1971). Eagle One has alleged no unusual
circumstances to justify shifting the burden of inconvenience. In
view of the fact that Gold Eagle filed first in ...