3M Company v. Starsiak

Background

3M sued Matthew Starsiak, AMK Energy Services LLC, and John Does 1 through 10. 3M alleged that the defendants falsely claimed to represent 3M and used 3M’s name and trademarks in a deceptive effort to sell 3M N95 respirators during the COVID-19 pandemic. The complaint asserted claims under the federal trademark statute, the Lanham Act, and Minnesota law concerning unlawful trade practices, trademark infringement, trademark dilution, and false advertising.

3M moved for a temporary restraining order and a preliminary injunction. It sought to bar the defendants from using the 3M marks or confusingly similar marks in connection with goods or services, including 3M-brand N95 respirators. It also sought to stop false or misleading statements that the defendants were authorized distributors, vendors, agents, representatives, retailers, or licensees of 3M; that they were affiliated with or sponsored by 3M; or that 3M had raised prices for its N95 respirators.

The defendants argued that the court lacked specific personal jurisdiction over them and that 3M had not met the requirements for emergency injunctive relief. The defendants separately filed a motion to dismiss under Federal Rule of Civil Procedure 12(b)(2), which was scheduled for a later hearing.

Personal jurisdiction

For purposes of the temporary restraining order, the court held that 3M had made the required initial showing of specific personal jurisdiction. The court considered the defendants’ communications with 3M employees in Minnesota and their alleged representations to third parties that they had an ongoing relationship with 3M and access to its products and attorneys.

The court applied the effects test for intentional wrongdoing and the Eighth Circuit’s five-factor analysis of contacts with the forum state. It found that the alleged statements were directed toward Minnesota, that the alleged harm to 3M’s reputation and goodwill was felt there, and that the defendants’ contacts were related to the claims. The court also recognized that the defendants had presented valid arguments against jurisdiction and that the record was not fully developed. It therefore deferred a more complete decision on personal jurisdiction and allowed the parties to consider limited jurisdictional discovery before the later hearing.

Temporary restraining order

To decide whether to issue a temporary restraining order, the court weighed 3M’s likelihood of success, the threat of irreparable harm, the balance of harms, and the public interest.

The court found that 3M appeared likely to succeed on its trademark and related state-law claims. It stated that the evidence showed the defendants used “3M,” presented themselves as authorized 3M distributors for identical goods, falsely claimed an affiliation with 3M, and caused confusion for a potential buyer who initially believed the defendants were authorized 3M dealers.

The court also found sufficient evidence of threatened irreparable harm to 3M’s reputation and goodwill. It concluded that the balance of harms favored 3M because the defendants had no affiliation with 3M and were not authorized to sell its products. The court further found that the public interest favored protecting trademarks.

Order

The court granted 3M’s motion as to the temporary restraining order, subject to the stated terms, and deferred ruling on the request for a preliminary injunction. The order temporarily restrained the defendants and those acting with them from using the 3M marks or confusingly similar marks in connection with goods or services, including 3M-brand N95 respirators. It also barred false, misleading, or deceptive conduct concerning 3M and its products, including false claims of authorization, affiliation, sponsorship, or a price increase by 3M.

The temporary restraints lasted until the conclusion of the August 5, 2020 hearing on the preliminary-injunction request and the defendants’ motion to dismiss. The court stated that 3M did not need to post a bond. The parties were ordered to meet and confer about the scope of limited jurisdictional discovery and their briefing schedule, then report to the court within one week.