Seattle Trademark Lawyer

Plaintiff Boyds Coffee Co. is a Portland, Ore.-based company that sells coffee, sauces, and seasonings under its BOYDS registered trademarks.

Defendant Cowboy Boyd’s, LLC, is a St. Louis-based company that sells barbecue sauces, salsas, chili mixes, and coffee under its COWBOY BOYD’S trademark.

In 2007, the president of Boyds met the principal and sole employee of Cowboy Boyd’s at a trade show and informed him that Boyds had various trademarks incorporating the name “Boyd.” Cowboy Boyd’s later filed an application to register COWBOY BOYD’S for sauces, marinades and seasonings, but it was refused on the ground that it was confusingly similar to Boyds’ registered marks.

Two demand letters later, Boyds filed suit against Cowboy Boyd’s for trademark infringement in the District of Oregon.

Cowboy Boyd’s moved to dismiss based on lack of personal jurisdiction.

District of Oregon Magistrate Judge Dennis James Hubel found that “Boyds has made a prima facie showing that, before this action was filed, 1) Cowboy Boyd’s knew Boyds was engaged in a business similar to that of Cowboy Boyd’s and produced many of the same kinds of products as Cowboy Boyd’s, claimed trademarks using the name Boyds, and considered Cowboy Boyd’s marks to be infringing; 2) Cowboy Boyd’s knew its application for the trademark Cowboy Boyd’s had been refused by the USPTO on the ground that it was similar to the federally registered trademarks of Boyds; and 3) Cowboy Boyd’s knew that Boyds did business in Oregon.”

Cowboy Boyd’s argued that its contacts with Oregon were not sufficient to make the exercise of jurisdiction reasonable, and that Missouri would be an alternative — and far more convenient — forum for a defendant with only one employee who lives and works in Missouri.

The magistrate sympathized with Cowboy Boyd’s but denied its motion to dismiss.

It concluded: “Although Cowboy Boyd’s has articulated some considerations that weigh against the exercise of personal jurisdiction, particularly the argument that its purposeful direction of activities toward Oregon has not been extensive, Cowboy Boyd’s has not presented a compelling case that the exercise of jurisdiction would be unreasonable.”

On Sept. 30, District of Oregon Judge Robert Jones adopted the magistrate’s findings and recommendations.

The case cite is Boyds Coffee Co. v. Cowboy Boyd’s, LLC, 2008 WL 4461846, No. 07-1516 (D. Or.) (Hubel, M.J.).