IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

UNION OF ORTHODOX JEWISH :

CONGREGATIONS OF AMERICA, :

Plaintiff :

:

v. : CIVIL NO. AMD 05-620

:

BRACH’S CONFECTIONS, INC., :

Defendant :

 ...o0o...

 MEMORANDUM OPINION

Plaintiff, the Union of Orthodox Jewish Congregations of America, is a New York

not-for-profit corporation which provides kosher product certifications, i.e., certifications for

foods that are prepared in accordance with special Jewish dietary laws. Plaintiff alleges that

the market for kosher foods was recently estimated to exceed 8.5 million consumers, and

includes many persons who are not of the Jewish faith. Plaintiff is the owner of a

certification mark, a circled “u”, that is registered with the United States Patent and

Trademark Office. 

Defendant Brach’s Confections, Inc., a Delaware corporation with its principal place

of business in Dallas, Texas, manufactures and markets confections and candies, including

“Star Brites Peppermint,” throughout the United States. 

This trademark infringement action arises out of plaintiff’s discovery in February

2005 that certain wrappers on defendant’s “Star Brites Peppermint” candies appeared to

contain plaintiff’s certification mark. Plaintiff has never authorized defendant to employ its

certification mark. Thereafter, the parties’ respective legal departments and outside counsel

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The Orthodox Union, joined as defendant in the Texas action, filed a motion to stay (but

not a motion to transfer venue) in the Texas action. As the briefing on the mirror-image motions

in both courts proliferated, and believing that the Orthodox Union had filed a motion to transfer

venue in the Texas action, I sua sponte stayed this case in deference to the action of the court in

the Texas case. After a hearing on the motion to stay the Texas action (again, there was no

motion to transfer), the Honorable Barefoot Sanders, United States District Judge, stayed the

Texas action, but it is clear that Judge Sanders did not intend to grant, and did not grant, the

Union’s motion to stay so that this case could proceed to final judgment or, more likely,

settlement. Rather, it is clear that Judge Sanders stayed the Texas case solely to permit this court

to rule on the motion to transfer pursuant to § 1404(a). See April 21, 2005, Transcript at 18 (“I

will stay pending the Maryland court’s ruling on the pending motion to transfer the Maryland

case.”). 

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had an exchange of some rather over-heated emails and letters, in the course of which, in

classic “lawyerese,” Louis Vuitton S.A. v. Lee, 875 F.2d 584, 587 (7th Cir.1989)(Posner, J.),

plaintiff threatened to sue. Defendant had vigorously denied any use of the plaintiff’s mark

on its products, knowing, intentional or otherwise, but, at the same time, had offered

somewhat conflicting explanations as to why one might mis-interpret the wrapper to

conclude that defendant was using the mark on its wrappers. 

In short order, in a classic “race to the courthouse,” litigation commenced. Plaintiff

won the race by a few hours when it filed this action for infringement of its mark on March

3, 2005; defendant filed a declaratory judgment action seeking a declaration of noninfringement on March 4, 2005, in the United States District Court for the Northern District

of Texas, its home forum. Now pending are defendant’s motion pursuant to 28 U.S.C.

§1404(a) to transfer this case to the United States District Court for the Northern District of

Texas and plaintiff’s motion to enjoin defendant from prosecuting the Texas action. The

motions are fully briefed and no hearing is needed.*

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It is undisputed that plaintiff is headquartered in New York and that defendant is

headquartered in Dallas. The only relevant connection this district has to this dispute is that

some of the allegedly infringing products were found on the shelves of one or more retail

food stores in Baltimore, and a local rabbi would so testify. 

Under §1404(a), a district court may transfer any civil action to any other district or

division where it might have been brought for the convenience of parties and witnesses and

in the interest of justice. The factors courts consider under §1404(a) are well-known and

long-settled:

“To prevail on a motion to change venue pursuant to §1404, the

‘defendant must show by a preponderance of the evidence’ that the proposed

transfer will better and more conveniently serve the interests of the parties and

witnesses and better promote the interests of justice.” Figgie International,

Inc. v. Destileria Serralles, Inc., 925 F.Supp. 411 (D.S.C. 1996)(citations

omitted)(declining to transfer case from South Carolina to Puerto Rico);

Merkur v. Wyndham Int'l, Inc., 2001 WL 477268 (E.D.N.Y. March 30, 2001)

(refusing to transfer slip and fall claim to Puerto Rico where defendant

operated more than 200 hotel properties around the world). The convenience

factors courts consider in applying §1404(a) include: “1) the plaintiff’s choice

of forum; 2) relative ease of access to sources of proof; 3) availability of

compulsory process for attendance of unwilling witnesses, and the cost of

obtaining attendance of willing and unwilling witnesses; 4) possibility of a

view of the premises, if appropriate; 5) enforceability of a judgment, if one is

obtained; 6) relative advantage and obstacles to a fair trial; 7) other practical

problems that make a trial easy, expeditious, and inexpensive; 8)

administrative difficulties of court congestion; 9) local interest in having

localized controversies settled at home; 10) appropriateness in having a trial

of a diversity case in a forum that is at home with the state law that must

govern the action; and 11) avoidance of unnecessary problems with conflicts

of laws.” Choice Hotels International, Inc. v. Madison Three, Inc., 23

F.Supp.2d 617, 622 n. 4 (D.Md. 1998) (citing Plant Genetic Sys., N.V. v. Ciba

Seeds, 933 F.Supp. 519, 527 (M.D.N.C. 1996); see Etienne v. Wolverine Tube,

Inc., 12 F.Supp.2d 1173, 1182 (D. Kan. 1998) (quoting Chrysler Credit Corp.

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v. Country Chrysler, Inc., 928 F.2d 1509, 1516 (10th Cir. 1991)).

 

Helsel v. Tishman Realty Constr. Co., Inc., 198 F.Supp.2d 710, 711-12 (D.Md.2002); ColeTuve, Inc. v. American Machine Tools Corp., 342 F.Supp.2d 362, 370 (D.Md. 2004); Brown

v. Stallworth, 235 F.Supp.2d 453, 455 (D.Md. 2002).

In support of its motion to transfer venue, defendant contends that the plaintiff’s

choice of a foreign forum, with only a tenuous connection to the dispute, rather than its home

forum, disentitles plaintiff to any deference from the court in its choice to litigate its claims

in this district. (This is true, according to defendant, even where, as here, plaintiff has

asserted parallel state law claims calling for the application of Maryland law). Defendant

also contends that the “first-filed” doctrine, see Mattel, Inc. v. Louis Marx & Co., 353 F.2d

421, 423 (1965), cert. dismissed, 384 U.S. 948 (1966), cited with approval in Ellicott Mach.

Corp. v. Modern Welding Co., Inc., 502 F.2d 178, 180 n.2 (4th Cir. 1974), should not be

given significant weight in the court’s transfer of venue determination under the

circumstances here. Finally, defendant contends that the parties’ witnesses with knowledge

of the relevant facts are all, or virtually all, outside this district, and in particular, its

executives and legal personnel with knowledge of the issues in this case are, with one

exception, all located in Dallas. Defendant contends that this district was chosen simply

because it is convenient for plaintiff’s Washington, D.C.-based counsel, which is not a factor

courts will weigh in favor of retaining jurisdiction where transfer is otherwise indicated. Cf.

In re Volkswagen AG, 371 F.3d 201, 206 (5th Cir. 2004)(“[T]he convenience of counsel is

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not a factor to be assessed in determining whether to transfer a case under § 1404(a).” ).

For its part, plaintiff emphasizes the “plaintiff’s-choice-of-forum” factor and the

“first-filed” doctrine as weighty considerations favoring an injunction against defendant’s

prosecution of the Texas action and against transfer of this action to Texas. In fact, however,

as defendant contends, those factors are not significant here. Plaintiff, a New York entity,

clearly chose a forum for the convenience of its counsel; indeed, although the case was filed

in the Southern Division of this court, the courthouse for which is even closer to the District

of Columbia offices of plaintiff’s counsel than the Baltimore courthouse, the case was

assigned to this (Northern) division because defendant’s agent for service of process is

located in this division. Furthermore, plaintiff’s failure to move to transfer venue in the

Texas action to this district is telling. The record shows that such a motion almost certainly

would have been denied; understandably no such motion was made. (Nor do I believe it is

ever appropriate for a federal district judge to be asked to, in effect, take control of another

district judge’s docket by purporting to “enjoin” the prosecution of that case by one of the

parties to the case.) In short, as between Texas and Maryland, Texas is a far more convenient

forum for these litigants in respect to the claims asserted here. Plaintiff does not deny that

the case could have been brought in the Northern District of Texas. However convenient the

Southern District of New York would have been, plaintiff chose not to litigate its claims

there. 

Plaintiff has cobbled together several freestanding arguments in an effort to shore up

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its choice of forum in the face of the convenience factors militating in favor of transfer.

Plaintiff notes: (1) many consumers of kosher foods are in Maryland; (2) defendant derives

significant revenue from its sales in Maryland; (3) plaintiff’s New York based personnel are

closer to Maryland than to Texas, and travel to Maryland from New York is more convenient

than is travel to Texas from New York; (4) plaintiff is a not-for-profit corporation and is

concerned about its costs; (5) defendant has significant national market share in its industry

and is a “Goliath” in a legal battle with a “David;” (6) the offending candy wrappers were

printed in Argentina, not in Texas; and (7) some of the offending goods were found in this

district.

Notwithstanding the above contentions, many of doubtful relevance, I am not

persuaded by plaintiff’s arguments that the balance of convenience and the interest of justice

favors litigation of this case in this district over the Northern District of Texas. I “decline to

place undue significance on the [outcome of the] race to the courthouse door.” Centennial

Life Ins. Co. v. Poston, 88 F.3d 255, 258 (4th Cir 1996). Morever, “the lower federal courts

have routinely given less weight to a foreign plaintiff’s choice of forum.” Piper Aircraft Co.

v. Reyno, 454 U.S. 235, 256 n.23, (1981) (forum non conveniens), and that approach is

justified here in the face of the balance of convenience factors. See Ralph v. Long, 2001 WL

706034 *2 (D.Md. June 14, 2001)(“A plaintiff’s choice of forum is generally accorded

considerable deference, unless the plaintiff is a non-resident of either that forum or of the

location where the cause of action arose. See Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255

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(1981) (generally, there is “a strong presumption in favor of the plaintiff’s choice of forum”);

Biometics, LLC. v. New Womyn, Inc., 112 F.Supp.2d 869, 877 (E.D.Mo.2000) (federal courts

give great deference to plaintiff’s choice of forum, except when it is not the plaintiff’s

residence) (citations omitted); Boyd v. Snyder, 44 F.Supp.2d 966, 969 (N.D.Ill.1999) (less

weight accorded, inter alia, when cause of action did not “conclusively arise in forum”)

(citations omitted); Tischio v. Bontex, Inc., 16 F.Supp.2d 511, 521 (D.N.J.1998) (plaintiff’s

choice of forum is given less weight when he or she does not reside there or the forum has

little connection to the “operative facts of the lawsuit”) (citations omitted)”). 

Accordingly, the motion to transfer venue shall be granted and the motion to enjoin

shall be denied.

Filed: May 11, 2005 /s/ 

ANDRE M. DAVIS

UNITED STATES DISTRICT JUDGE

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