Roland Tong’s Defense Verdict in Trademark Dispute Highlighted by Law360

Orange County Partner Roland Tong recently obtained a defense verdict in a California federal trademark case that was featured in Law360. The case involved our client, a New York-based limited liability company that operates a wine store, and a similarly named California-based corporation that specializes in the sale of Japanese alcoholic beverages. Our client has operated its store in-person and online in specified states since 2013, while the California-based company has offered its goods in stores and online since 2018. 

After our client submitted cease-and-desist letters for trademark infringement, the California-based company filed a complaint, seeking a declaratory judgment that it did not infringe on our client’s trademark and instead alleging that our client infringed on their trademark by directing its sales toward the State of California. While our client had previously delivered its goods to California, its sales to the state averaged less than .01% of its annual transactions, and as of 2023, our client stopped shipping its goods to California upon discovering shipping restrictions on wine. Accordingly, Mr. Tong successfully persuaded the Court to dismiss the case due to its lack of personal jurisdiction. 

To establish that the Court had jurisdiction, the Complainants would have had to first establish that our client had purposefully directed their sales to the State of California, which they failed to do. The Complainants did not allege that our client intentionally, willfully, or knowingly infringed on their trademark, nor that our client had knowledge of the existence of the Complainants and their trademark when they were selling goods to California. Likewise, they had not made our client aware of potential infringement through cease-and-desist letters. As such, the Court granted our motion to dismiss as our client could not have known that the Complainants would be harmed. 

Roland Tong is the leader of the Patent Law division of the Intellectual Property team and a member of the Business Litigation team at Manning Kass. He has litigated various high stakes Intellectual Property disputes and has pursued patents for valuable inventions of many companies. For four consecutive years, he was selected for inclusion in Super Lawyers Southern California Rising Stars, a distinction given to only 5% of practicing attorneys in Southern California. 

Read the Law360 article here (subscription required).