The opinion of the court was delivered by: GETTLEMAN
Plaintiff Boston Chicken, Inc. filed this declaratory judgment action seeking to have the court determine whether there is a likelihood of confusion between plaintiff's mark BOSTON MARKET and defendant Market Bar-B-Que, Inc.'s marks that contain the word "market," and seeking an order directing the Commissioner of the United States Patent and Trademark Office to cancel defendant's U.S. Registration No. 1,191,424 for the mark MARKET. Plaintiff alleges subject matter jurisdiction over this case pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, and the Lanham Act, 15 U.S.C. § 1051, and that venue is proper in this district pursuant to 28 U.S.C. § 1391(b).
Defendant has filed a motion pursuant to Fed.R.Civ.P. 12(b)(2) and (3) to dismiss this action for lack of personal jurisdiction and improper venue. For the reasons stated below, defendant's motion is granted.
Plaintiff is a corporation organized under the laws of the State of Delaware and has its principal place of business in Golden, Colorado. Plaintiff operates and licenses franchisees to operate restaurants in thirty states including Illinois and Minnesota.
Plaintiff, by and through its franchisee Northstar Restaurants, Inc., operates at least eight restaurants in a five county Minneapolis-St. Paul, Minnesota area under the name "Boston Market." On March 28, 1995, defendant's lawyer sent a letter to plaintiff's counsel who are located in Chicago, Illinois, stating that defendant has three Registrations in the State of Minnesota and two Registrations issued by the United States Patent and Trademark Office for the mark "Market Bar-B-Que" and "Market" (the "Cease and Desist Letter"). The Cease and Desist Letter states:
This firm represents Market Bar-B-Que, Inc., a/k/a THE MARKET, a/k/a MARKET cafe in relation to its intellectual property matters, and specifically trademarks. It has been brought to my attention that your client is opening a restaurant under the tradename BOSTON MARKET in the Minneapolis area on Highway 100 and Excelsior Boulevard. Thus, your client is utilizing the service mark of my client, MARKET, in connection with restaurant services.
As its trademark counsel, I have advised my client that use of MARKET by Boston Chicken, Inc. in the fashion of BOSTON MARKET, in connection with restaurant services, constitutes trademark infringement and unfair competition and dilutes my client's trademark rights under the new Minnesota antidilution statutes. Use by Boston Chicken, Inc. of MARKET, is likely to cause consumers to think that my client has either endorsed, sponsored, or is in some way affiliated with Boston Chicken, Inc., or has itself expanded.
I look forward to hearing from you so that this matter may be most expeditiously completed and the restaurant your client is opening in Minnesota renamed, immediately.
On April 7, 1995, plaintiff filed the instant complaint. On May 15, 1995, defendant filed a complaint in Minnesota State Court seeking, among other things, to permanently enjoin plaintiff's use of any "trademark, tradename or trade designation including the word 'Market', or any confusingly similar term or trademark including 'Boston Market' or otherwise from infringing [Market B-B-Que's] valued ...