United States District Court, E.D. Washington
ORDER DENYING MOTION TO CHANGE VENUE
SALVADOR MENDOZA, JR. United States District Judge
the Court is Defendant Sleeping Giant Beverage Company
Inc.'s Motion for Transfer, ECF No. 17. Defendant moves
to transfer venue under 28 U.S.C. § 1404(a) to the
District Court for the District of Montana, specifically to
the courthouse located in Helena, Montana. Plaintiff Hood
River Distillers Inc. opposes the motion. ECF No. 27. As the
Court finds that oral argument is not warranted under Local
Civil Rule 7(i)(3)(B)(iii), the Court considered the motion
without oral argument on the date signed below. Having
reviewed the pleadings and the documents submitted, the Court
is fully informed and denies the motion.
is an Oregon corporation with its principal place of business
in Hood River, Oregon. ECF No. 1, 4. In 2004, Plaintiff
obtained the trademark rights to LEWIS & CLARK (the
“trademark”) from Montana Distillers, which had
been using the trademark since at least as early as 1986.
Id. at 2. Plaintiff sells distilled spirits under
the trademark LEWIS & CLARK throughout the United States,
including in Spokane, Washington. Id. Indeed, each
year since 2013, Plaintiff has sold at least 2250 nine-liter
cases of spirits branded with the trademark in Spokane,
October 24, 2004, Plaintiff filed a United States Trademark
Application to protect the LEWIS & CLARK trademark for
distilled spirits. Id. The Patent and Trademark
Office initially refused to register Plaintiff's
trademark because it alleged “a likelihood of confusion
with the mark LEWIS & CLARK LAGER (“lager”
disclaimed) in U.S. Registration No. 2940715.” ECF No.
1-2 at 2. LEWIS & CLARK LAGER (“lager”
disclaimed) was registered to Defendant, a Montana
corporation with its principal place of business and
corporate headquarters in Helena, Montana. See ECF
No. 17 at 2.
filed a cancellation petition against Defendant's
Registration No. 2940715. ECF No. 1 at 3. It ultimately
prevailed and Defendant's Registration No. 2940715 was
canceled. Id. Plaintiff was then able to obtain
Registration No. 3, 113, 475, registered on July 11, 2006 to
trademark LEWIS & CLARK for distilled spirits. ECF No.
1-1 at 2.
knowing that the use of both marks would likely cause
confusion, Defendant did not discontinue, and in fact
geographically expanded, its use of LEWIS & CLARK LAGER
(“lager” disclaimed) for beer. ECF No. 1 at 3. On
February 6, 2019, Plaintiff brought this action for (1)
federal trademark infringement, (2) Washington state
trademark infringement, and (3) federal unfair competition.
Id. at 8-11.
28 U.S.C. § 1391(b), a case may be brought in the venue
(1) where any defendant resides, if all defendants are
residents of the state in which the district is located, (2)
where a “substantial part of the events or omissions
giving rise to the claim occurred, ” or (3) if there is
no other district, in any district where any defendant is
subject to the court's personal jurisdiction. If a matter
is not brought in the correct venue, the Court may dismiss
the case, or, in the interest of justice, transfer the case
to the appropriate venue. 28 U.S.C. § 1406(a).
where jurisdiction is proper, the Court may transfer an
action to any other district or division where it might have
been brought “for the convenience of parties and
witnesses, in the interest of justice.” 28 U.S.C.
§ 1404(a). Transfer may be warranted “to prevent
the waste of time, energy and money and to protect litigants,
witnesses and the public against unnecessary inconvenience
and expense.” Van Dusen v. Barrack, 376 U.S.
612, 616 (1964) (quoting Cont'l Grain Co. v.
Barge FBL - 585, 364 U.S. 19, 26-27 (1960)).
The Court may flexibly consider a variety of factors in
evaluating a § 1404(a) motion to transfer, including
(1) the location where the relevant agreements were
negotiated and executed, (2) the state that is most familiar
with the governing law, (3) the plaintiff's choice of
forum, (4) the respective parties' contacts with the
forum, (5) the contacts relating to the plaintiff's cause
of action in the chosen forum, (6) the differences in the
costs of litigation in the two forums, (7) the availability
of compulsory process to compel attendance of unwilling
non-party witnesses, and (8) the ease of access to sources of
Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-99
(9th Cir. 2000).
does not dispute that venue is proper in this district, but
requests a § 1404(a) transfer in the interest of justice
to the District of Montana, as this matter could have been
brought there. ECF No. 17. Plaintiff does not dispute that