Administrative-Trademark Infringement-Reserved Trademark Interests-Forum Selection Clause

Plaintiffs appealed the dismissal of their trademark infringement and Lanham Act action against defendants on forum non conveniens grounds. Plaintiffs sold their company to defendants, withholding three trademarks originally registered to the company. Plaintiffs alleged that defendants infringed upon those reserved trademark rights. The district court dismissed the case pursuant to the forum selection clause in the parties’ stock purchase agreement.

Where resolution of the validity and scope of the reservation of the trademark interests would require the courts to examine the parties’ agreement, the district court did not err in interpreting and enforcing the agreement’s forum selection clause as requiring litigation of plaintiffs’ claims in South Dakota state court, as state courts could hear federal Lanham Act claims.

Kelly, J., concurring: “The forum selection clause in the parties’ Stock Purchase Agreement applies to any “dispute arising out of” the Agreement. In my view, the clause applies to Boyd’s claims here because the Agreement included an obligation for the Rectenwalds—as buyers of Deadwood Tobacco Company (DTC)—to effectuate transfer of ownership…Ownership is an element of Boyd’s prima facie case for her trademark infringement claim…As a result, her suit “arises out of” the Agreement and falls within the scope of the Agreement’s mandatory forum selection clause.”

Grasz, J., dissenting: “Rather, the claims stem from alleged infringing actions taken by DTC after the sale had been completed. The parties do not dispute Boyd’s ownership of the Deadwood marks. Therefore, the substance of their claims requires examination of the actions taken by DTC and the trademarks at issue, not the Agreement.”

Judgment is affirmed.

Boyd v. Deadwood Tobacco Company (MLW No. 84889/Case No. 25-1659 – 33 pages) (U.S. Court of Appeals, 8th Circuit, Smith, J.) Appealed from U.S. District Court, District of South Dakota, Theeler, J. (Ryan Alan Roman, Fort Lauderdale, FL for appellant; Sarah Boensch Collins, Rapid City, SD; Susan B. Meyer, San Diego, CA; Alejandro J. Fernandez, Tampa, FL; and Reginald Janvier, Fort Lauderdale, FL on the brief) (Kenneth R. Munro, Des Moines, IA for appellee; Daniel Francis Duffy, Rapid City, SD and Emily M. Smoragiewicz, Rapid City, SD on the brief)