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S.C. Johnson & Son, Inc. v. Buzz Off Insect Shield

July 28, 2005

S.C. JOHNSON & SON, INC., PLAINTIFF,
v.
BUZZ OFF INSECT SHIELD, LLC, DEFENDANT.



The opinion of the court was delivered by: Matthew F. Kennelly, District Judge

MEMORANDUM OPINION AND ORDER

Plaintiff S.C. Johnson & Son, Inc., has filed a six-count complaint against defendant Buzz Off Insect Shield, LLC ("BOIS"). S.C. Johnson asserts that Defendant's BUZZ OFF mark is confusingly similar to S.C. Johnson's OFF! and BUZZOFF marks and charges BOIS with trademark infringement, unfair competition, and false advertising under the Lanham Act, 15 U.S.C. §§ 1114 & 1125(a); unjust enrichment; and violation of the Illinois Consumer Fraud and Deceptive Business Practices Act and the Illinois Uniform Deceptive Trade Practices Act. BOIS has moved to transfer venue to the Middle District of North Carolina pursuant to 28 U.S.C. § 1404(a), or to dismiss the case pursuant to Rule 12(b)(7) for failure to join an indispensable party, namely the entity that produces the allegedly offending products on behalf of BOIS. For the following reasons, the Court grants the motion to transfer venue.

Facts

The Court takes the following facts from S.C. Johnson's complaint, which we take as true for purposes of the motion to transfer.

S.C. Johnson, a Wisconsin corporation with its principal place of business in Racine, Wisconsin, manufactures, under the trademark OFF and related marks, a variety of insect repellent products. S.C. Johnson's OFF! brand insect repellents are the leading selling insect repellents in the United States and can be purchased at a wide variety of retail outlets, including on-line retailers. S.C. Johnson began using the OFF! mark in 1957 and obtained a federal registration for the mark in 1990.

BOIS, a North Carolina limited liability company with its principal place of business in Greensboro, North Carolina, is a competitor of S.C. Johnson in the insect repellent market. BOIS manufactures a brand of insect repellent clothing bearing the mark BUZZ OFF, which has been treated with an insecticide in a manner that, according to BOIS, has the effect of protecting the wearer of the clothing from being bitten by insects. BUZZ OFF apparel is sold at outdoor-specialty stores and through on-line retailers. In December 2002, BOIS acquired the rights to the BUZZ OFF mark from R.A. Lane Corporation, which had obtained federal registration for the mark in October 2001.

In October 2002, S.C. Johnson learned that BOIS had filed a federal application to register BUZZ OFF as a mark to be used on apparel. In response, S.C. Johnson filed an opposition to BOIS's registration with the U.S. Trademark Office in February 2003, based on a likelihood of confusion with S.C. Johnson's OFF marks. After attempts to negotiate a resolution with BOIS were unsuccessful, S.C. Johnson commenced an opposition proceeding before the U.S. Trademark Office's Trademark Trial and Appeal Board. BOIS then filed additional applications with the U.S. Trademark Office for BUZZ OFF for use with apparel and related goods.

Maryed International, Inc., a Florida corporation that is not a party to this case, also produces insect repellent apparel. A variety of specialty retailers in the United States, as well as WalMart stores in the southeastern United States, have sold Maryed's BUZZOFF Outdoor Wear. Maryed obtained a Florida trademark registration for BUZZOFF in June 1992 and has continuously used the mark in interstate commerce since that date.

On March 7, 2003, BOIS's Chairman and CEO, Haynes Griffin, and its President, Richard A. Lane, met with Maryed's President and Director, Mary Baltes, to explain their intention to launch a new line of insect repellent apparel and allegedly also sought to acquire Maryed's BUZZOFF trademark rights. Baltes rejected the proposal. A few months later, in August 2003, BOIS launched its BUZZ OFF line of apparel. Since then, a number of customers have contacted Maryed to determine the company's affiliation with BUZZ OFF or BOIS. In February 2005, S.C. Johnson acquired all of the rights to Maryed's BUZZOFF trademark and, shortly thereafter, filed a federal trademark application for BUZZOFF.

In this suit, S.C. Johnson alleges that BOIS adopted its BUZZ OFF mark despite the likelihood of confusion with S.C. Johnson's marks and that BOIS's BUZZ OFF mark is substantially similar in sound and appearance to both S.C. Johnson's OFF! and OFF-based series of marks and to its BUZZOFF mark. Because the products are sold in the same channels of trade, S.C. Johnson also asserts that BOIS's use of its mark creates a likelihood of confusion as to the origin of apparel bearing the BUZZ OFF mark.

Discussion

"A district court may transfer a civil action for the convenience of the parties and witnesses [and] in the interests of justice . to any other district or division where it may have been brought." 28 U.S.C. § 1404(a). The moving party bears the burden of demonstrating that the transferee forum is "clearly more convenient." Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219-220 (7th Cir. 1986). In deciding a motion to transfer, the court must evaluate the convenience of the parties and witnesses involved by considering: "(1) the plaintiff's choice of forum; (2) the situs of material events; (3) the relative ease of access to sources of proof; (4) the convenience of the witnesses; and (5) the convenience of the parties of litigating in the respective forums." Millennium Prods., 127 F. Supp. 2d at 980.*fn1 Transfer will not be ordered if it would merely shift the burden of inconvenience from one party to the other. See, e.g., Millennium Prods. v. Gravity Boarding Co., 127 F. Supp. 2d 974, 980 (N.D. Ill. 2000).

1. Plaintiff's Choice of Forum

The plaintiff's choice of forum is generally given substantial deference. See, e.g., party. College Craft Companies, Ltd. v. Perry, 889 F. Supp. 1052, 1054 (N.D. Ill. 1995). But no extra weight is given to this factor if, as in the present case, the plaintiff does not reside in the forum it selected. In such a case, the plaintiff's choice is merely a factor to consider along with the others. See Doage v. Board of Regents, 950 F. Supp. 258, 259-60 ...


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