TNT USA Inc. v. TrafiExpress, S.A. de C.V., 434 F. Supp. 2d 1322 (S.D. Fla. 2006) (full-text).
Plaintiffs were the Dutch company TNT and its U.S. affiliate that provided global parcel delivery services under the trademark TNT. Defendants included TNT U.S.'s sole affiliate in Mexico that used the TNT mark on its website to promote its business. Due to alleged breaches, including shipping packages to the U.S. using TNT's U.S. competitors, TNT ended its agreement with defendants. However, the Mexican defendants continued to use the TNT marks on their website, which they used to attract customers in the U.S. and elsewhere.
Trial Court Proceedings
Plaintiffs sued for trademark infringement and breach of contract, among other claims. Defendants moved to dismiss for lack of subject matter jurisdiction, claiming that the Lanham Act did not reach extraterritorially, and that the court was an inconvenient forum.
The court denied defendants' motion to dismiss, finding that the Lanham Act could be applied extraterritorially because: (1) defendants included a U.S. citizen who controlled the Mexican defendants’ U.S. activities and defendants made extensive use of TNT’s Miami hub to conduct substantial business in the United States, and (2) defendants exerted a significant effect on U.S. commerce through misuse of the TNT mark in U.S. commerce and through their continued identification of themselves on the website as a TNT agent. In addition, defendants' use of their website to solicit American customers "strengthen[ed] plaintiffs' overall case" for extraterritorial application of the Lanham Act.
The court also denied defendants' motion to transfer under the doctrine of forum non conveniens. Because plaintiff TNT U.S. was an American company, plaintiffs' choice of forum was entitled to a "high level of deference." Moreover, one of the defendants was American and the Mexican defendants all had substantial contacts with the U.S. Further, there were no evidentiary problems as the written agreement and termination letter were in English and defendants' website could be viewed equally well in either country. Lastly, the court noted that it would be applying mostly American law. Thus, the court held that the Southern District of Florida was the proper forum.
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