Patel v. Google LLC

Background

Dinesh Patel, representing himself, brought a trademark dispute involving two registered PEBBLES trademarks. He sued Google LLC, Sidewalk Labs, LLC, the City of Aspen, the City of Philadelphia, Sea Breeze Properties LLC, and the Downtown Brooklyn Partnership, Inc. His first amended complaint asserted federal trademark-infringement and unfair-competition claims under the Lanham Act, California unfair-competition claims under the California Unfair Competition Law, common-law trademark-infringement and unfair-competition claims, and a cybersquatting claim.

The Cities jointly moved to dismiss under Rules 12(b)(2) and 12(b)(6). Rule 12(b)(2) concerns whether the court has personal jurisdiction over a defendant; Rule 12(b)(6) concerns whether the complaint adequately states a claim. Sea Breeze moved under Rule 12(b)(6). The court also noted that the docket did not show service on the Downtown Brooklyn Partnership.

Rulings on the Cities

The court dismissed the claims against Aspen and Philadelphia for lack of personal jurisdiction. Personal jurisdiction is the court’s authority over a defendant. The court concluded that, even reading Patel’s complaint generously because he was representing himself, the complaint did not plausibly allege facts showing that the Cities had sufficient connections with California related to the asserted claims.

The court explained that trademark infringement is treated like a tort for this jurisdictional analysis. It applied a test asking whether a defendant intentionally acted, expressly directed the conduct at California, and caused harm the defendant knew was likely to be suffered there. The court found that the complaint’s general allegations about resellers directing consumers to the PEBBLE.APP domain and promoting goods and services did not adequately allege conduct by the Cities in California. The court also stated that Patel’s additional assertions in his opposition brief could not cure the complaint’s deficiencies.

The court said Patel would have an opportunity to try to amend the jurisdictional allegations. It deferred consideration of the Cities’ Rule 12(b)(6) motion pending proof of personal jurisdiction.

Rulings on Sea Breeze and Service

The court dismissed Patel’s Lanham Act, California Unfair Competition Law, and common-law trademark and unfair-competition claims against Sea Breeze. It found that the amended complaint mentioned Sea Breeze in only one paragraph, identifying it as a California limited liability company, and otherwise did not describe Sea Breeze’s alleged conduct with sufficient factual detail. Patel was given an opportunity to amend.

The court did not indicate in this order that the Downtown Brooklyn Partnership had been served. It ordered Patel to show cause in writing why that defendant should not be dismissed under Rule 4(m), which addresses failure to serve a defendant within the required period.

Stay, Deadlines, and Warning

The court lifted the stay. Patel’s response to the service order was due July 1, 2024. The response had to include a declaration, made under penalty of perjury, stating that Patel wrote it alone without another person’s assistance. If he could not truthfully make that statement, he had to identify specifically the assistance he received and its source.

Patel could file a second amended complaint consistent with the order by July 8, 2024. The order prohibited adding new claims or parties without the court’s prior consent and required the same declaration concerning assistance with the amended complaint. The court warned that failure to meet the deadlines or otherwise comply would result in dismissal of the case under Rule 41(b).

Disposition

The court granted the dismissal requests as described above, deferred the Cities’ Rule 12(b)(6) motion, ordered a response concerning service on the Downtown Brooklyn Partnership, lifted the stay, and allowed Patel to amend.