Cole-Parmer Instrument Company LLC v. Professional Laboratories, Inc.

Background

Cole-Parmer Instrument Company LLC sued Professional Laboratories, Inc. The complaint asserted five claims: federal trademark infringement, federal unfair competition, violation of California’s Unfair Competition Law, common-law trademark infringement, and common-law unfair competition.

Cole-Parmer alleged that it owned the ZEFON and AIR-O-CELL trademarks. It alleged that Professional Laboratories had previously purchased more than one million private-labeled AIR-O-CELL cassettes from Cole-Parmer’s predecessor. Cole-Parmer further alleged that Professional Laboratories later reused discarded ZEFON-branded cassettes, replaced their internal collection media with different and inferior components, and sold or distributed products that laboratories mistakenly believed were genuine original devices.

Professional Laboratories moved to dismiss. It argued that the Northern District of California lacked personal jurisdiction over it, that venue was improper, that the claims were subject to a forum-selection clause, and that the case should be transferred to the Southern District of Florida. It also argued that three of the claims failed to state a claim.

Personal Jurisdiction

Personal jurisdiction is a court’s authority to require a particular defendant to defend a case in that forum. The court addressed both general and specific personal jurisdiction.

The court held that Professional Laboratories was not subject to general personal jurisdiction in California. Professional Laboratories was a Florida corporation with its principal place of business in Weston, Florida, and the court found that it could not be considered “at home” in California. The court also rejected Cole-Parmer’s arguments based on Professional Laboratories’ former California office, sales through retailers, website, privacy-policy compliance, membership in a California organization, and certification by a California department. Those contacts did not establish the exceptional circumstances required for general jurisdiction.

The court also held that Cole-Parmer had not adequately established specific personal jurisdiction. Although Cole-Parmer alleged intentional conduct, it did not provide enough facts showing that Professional Laboratories itself expressly aimed its conduct at California. The court found that sales by third-party retailers in California were insufficient, and Cole-Parmer did not identify a specific sale or direct marketing by Professional Laboratories to a California resident through its website.

The court separately held that Cole-Parmer had not shown that its claims arose out of Professional Laboratories’ California-related activities. The screenshots submitted by Cole-Parmer showed non-infringing Professional Laboratories products sold at California retail locations, not products bearing the specific allegedly infringing marks. The court therefore concluded that Cole-Parmer had not shown that the alleged infringement harmed it in California through Professional Laboratories’ forum-related conduct.

Disposition

The court GRANTED Professional Laboratories’ motion to dismiss Cole-Parmer’s complaint under Federal Rule of Civil Procedure 12(b)(2) for lack of personal jurisdiction, with leave to amend. Because the court resolved the case on personal-jurisdiction grounds, it did not reach Professional Laboratories’ other arguments.

The court also GRANTED Cole-Parmer’s request to conduct jurisdictional discovery. Cole-Parmer was required to file any amended complaint within 30 days. The order states that failure to file an amended complaint, or failure to correct the identified deficiencies, would result in dismissal of the deficient claims with prejudice. Cole-Parmer could not add new claims or parties without a stipulation or the court’s permission.