Shijin Vapor LLC v. Bolt USA, LLC

Background

Shijin Vapor, LLC manufactures e-liquids for electronic cigarettes, vaporizers, and similar products. Some products were marked with the name “Bolt” and sold through VaporDNA. Bolt USA, LLC applied for several trademarks involving the word “Bolt” and a stylized “Bolt” logo, then sent cease-and-desist letters to VaporDNA and Shijin Vapor.

Shijin Vapor filed a declaratory judgment action seeking a ruling that it used the “Bolt” mark before Bolt USA’s first use and therefore was legally entitled to use the mark. Shijin Vapor also asserted claims for intentional interference with contractual relations, intentional interference with prospective economic relations, and violation of California Business and Professions Code section 17200.

Motions and Venue Analysis

Bolt USA moved to dismiss or transfer the case under Federal Rule of Civil Procedure 12(b)(3) and 28 U.S.C. § 1406, arguing that venue was improper in the Northern District of California. In the alternative, Bolt USA sought transfer to the Central District of California under 28 U.S.C. § 1404(a), which permits transfer for the convenience of the parties and witnesses and in the interest of justice.

The court noted that Shijin Vapor had not shown venue under the provisions concerning a defendant’s residence or the fallback provision for cases in which no other district is available. The court nevertheless considered whether venue was proper because a substantial part of the events occurred in the Northern District under 28 U.S.C. § 1391(b)(2).

The court held that venue was proper there. It found persuasive the reasoning that, in a declaratory action involving alleged trademark infringement, the plaintiff’s activities may be relevant to venue. Venue was appropriate where Shijin Vapor sold or advertised goods bearing the accused mark and where it placed the mark on its goods or prepared advertising bearing it. The court found no dispute that Shijin Vapor performed those activities in the Northern District.

The court also held that the other claims could be heard there under pendent venue, meaning that a court may hear closely related claims once venue is proper for one claim. The claims involving VaporDNA were closely related because they arose from the trademark dispute and depended on its outcome.

Transfer Analysis

The court agreed that the case could initially have been brought in the Central District of California. But it held that Bolt USA had not made the strong showing of inconvenience needed to overcome Shijin Vapor’s choice of forum.

The court found that the alleged trademark infringement occurred in substantial part in the Northern District, so the plaintiff’s choice of forum weighed against transfer. The convenience-of-witnesses factor favored transfer only slightly because Bolt USA did not specifically identify the nonparty witnesses, describe their expected testimony, or explain its relevance. The court found that access to evidence, the forums’ familiarity with the law, consolidation, local interest, and court congestion either did not favor transfer or did not weigh for or against it.

Disposition

The court denied Bolt USA’s motion to dismiss or transfer under Rule 12(b)(3) and section 1406. It also denied Bolt USA’s motion to transfer under section 1404(a). The opinion decided venue and transfer only; it did not decide the parties’ underlying trademark dispute.