- Court: Intellectual Property Archives
- Area(s) of Law: Trademarks, Civil Procedure
- Date Filed: 09-17-2013
- Case #: 2:12-cv-06997
- Judge(s)/Court Below: United States District Court for the District of New Jersey
- LexisNexis Citation: 2013 U.S. Dist. LEXIS 132779
- Westlaw Citation: 2013 WL 5287614
Opinion (Cavanaugh): New India USA, LLC ("NI") owns the registered trademark "Desi Talk" as well as all assets of the New York Corporation "Desi Talk Inc." Desi Talk Inc. operates a weekly print and online newspaper which focuses on issues of interest to the Indian-American community. Desi Talk's website is www.desitalk.com. Vibrant Media Group, LLC ("Vibrant") operates out of Illinois and runs a print and online newspaper focused on the Indian-American community. Vibrant's newspaper is named "The Desi Times" and their website is www.thedesitimes.com. NI filed suit on November 9, 2012, claiming trademark infringement and associated causes of action. When Vibrant failed to respond to NI's 2012 suit, default judgment was entered in favor of NI. On February 8, 2013, NI filed suit seeking an entry of default judgment and a permanent injunction. Vibrant filed a response in opposition to the 2013 suit and moved to vacate the 2012 default judgment and to dismiss the 2013 suit for lack of personal jurisdiction. The court applied a three factor test and ruled that the 2012 default should be vacated because 1) NI was not prejudiced in its ability to pursue their claim; 2) Vibrant was prejudiced by the default to defend against NI's suit; and 3) Vibrant's failure to respond to the 2012 suit was reasonable due to difficulties experienced in finding New Jersey counsel while the Vibrant legal staff was in India. The court did not, however, dismiss the suit for lack of personal jurisdiction because, although the court ruled that simply having a website which was directed toward the Indian-American population did not by itself create sufficient ties to New Jersey to support personal jurisdiction, subsequent discovery could reveal the necessary requisite contacts. The court, therefore, DENIED NI's 2013 motion for default judgment, GRANTED Vibrant's motion to dismiss the 2012 default judgment, and DENIED Vibrant's motion to dismiss.