Real Safe Agent, Inc. v. Real Safe Technologies, Inc. et al

Filing 20

REPORT AND RECOMMENDATIONS re 12 Motion to Dismiss, filed by Realsaf, LLC, Real Safe Technologies, Inc.. Signed by Judge Andrew W. Austin. (dm)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION
REAL SAFE AGENT, INC.
v.
REAL SAFE TECH., INC., et al.

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A-17-CA-975 LY

REPORT AND RECOMMENDATION
OF THE UNITED STATES MAGISTRATE JUDGE
TO:

THE HONORABLE LEE YEAKEL
UNITED STATES DISTRICT JUDGE
Before the Court are Defendants Real Safe Technologies, Inc., and Realsaf, LLC’s Amended

Motion to Dismiss (Dkt. No. 12); Plaintiff’s Response (Dkt. No. 18); and Defendants’ Reply (Dkt.
No. 19). The District Court referred these Motions to the undersigned Magistrate Judge for report
and recommendation pursuant to 28 U.S.C. §636(b) and Rule 1(c) of Appendix C of the Local Rules.
This is a trademark case. The plaintiff—Real Safe Agent, Inc. is a Texas corporation with
its principal place of business in Austin. The defendant—Real Safe Technologies, Inc., is a
Delaware corporation with its principal place business in New Port Beach, California. Defendant
Realsaf, LLC is a Wyoming corporation with its principal place of business at the same California
address as Real Safe Technologies.
In 2015, Real Safe Agent launched the Real Safe Agent security system and app, which is
designed to help protect real estate agents in the field. Two years later, it filed a U.S. trademark
application for the mark “REALSAFE” in Class 036, for real estate agency services, claiming a date
of first use of January 2, 2015. Real Safe Agent also filed an intent to use trademark application on
August 4, 2017, in Class 009 for computer software for crime prevention in schools and on
campuses.

In October 2016, Realsaf, LLC filed Articles of Incorporation with the Wyoming Secretary
of State. On October 25, 2016, it filed an intent to use trademark application for the mark “REAL
SAFE.” In the description of goods and services, Realsaf, LLC claimed “installation, maintenance
and repair of cell phone related hardware” under Class 037, and “installation, maintenance, and
repair of cell phone related software” under Class 042. On that same day, Real Safe Technologies
filed an intent to use trademark application for the mark “REALSAFE” listing the same descriptions
of goods and services but also showing date of first use as January 1, 2017, and date of first use in
commerce as May 1, 2017.
In September 2017, Real Safe Technologies released its RealSafe app to the public. The next
month, an attorney for Real Safe Technologies sent a cease and desist letter to Real Safe Agent,
claiming it was infringing Real Safe Technologies’ REALSAFE mark, and threatening to file
oppositions to Real Safe Agent’s pending trademark applications. Further, Chris Risi, the
co-founder of Real Safe Technologies filed requests with Apple and Google to have the Real Safe
Agent app removed from the iTunes and Google Play app stores, respectively, claiming trademark
infringement. Days later, Real Safe Agent file this lawsuit, alleging claims for false designation and
dilution under 15 U.S.C. §1125, trademark infringement and fraudulent registration under the Texas
Business & Commerce Code, common law trademark infringement, common law unfair competition
and tortious interference with existing and prospective business relationships.
Defendants move to dismiss this action under Rule 12(b)(2) for lack of personal jurisdiction,
or under Rule 12(b)(3) for improper venue. Alternatively, they move to transfer venue to the District
of Arizona under 28 U.S.C. § 1404(a). Real Safe Agent concedes it cannot meet its burden to show
that this Court has jurisdiction over Defendants. It requests that the Court not dismiss the case, and
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instead transfer it to the Southern District of California, where it asserts personal jurisdiction over
Realsaf, LLC, is proper, as its principal place of business is located in Newport Beach, California.
Defendants assert that Newport Beach is not located in the Southern District of California.
Personal jurisdiction is “an essential element of the jurisdiction of a district court, without
which the court is powerless to proceed to an adjudication.” Ruhrgas AG v. Marathon Oil Co., 526
U.S. 574, 584 (1999) (internal quotations and alterations omitted); Sinochem Int'l Co. v. Malaysia
Int'l Shipping Corp., 549 U.S. 422, 436 (2007). A court should therefore normally resolve personal
jurisdiction issues before addressing other matters such as improper venue. When a defendant has
moved for dismissal pursuant to Rule 12(b)(2) for lack of personal jurisdiction, it is a plaintiff's
burden to make a prima facie showing of personal jurisdiction. Guidry v. U.S. Tobacco Co., Inc.,
188 F.3d 619, 625 (5th Cir. 1999). Here, Real Safe Agent concedes it cannot meet its burden to
show the Court has jurisdiction over Defendants. Thus, the claims against Defendants should be
dismissed for lack of personal jurisdiction pursuant to Rule 12(b)(2).1
III. RECOMMENDATION
For the reasons set forth above, the Court RECOMMENDS that the district judge GRANT
IN PART Defendants Real Safe Technologies, Inc., and Realsaf, LLC’s Amended Motion to
Dismiss (Dkt. No. 12), DISMISS Plaintiff’s Complaint WITHOUT PREJUDICE for lack of

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Because the Court lacks personal jurisdiction over Defendants, it does not need to reach
Defendants’ improper venue argument. However, venue is also clearly improper here. Venue is
proper in a district where any defendant resides, if all defendants are residents of the same state; or
where a substantial part of the events giving rise to the claim occurred; or if there is no such district,
then in any district in which any defendant is subject to the court’s personal jurisdiction. 28 U.S.C.
§ 1391(b). This district does not fit into any of these categories.
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personal jurisdiction, and DENY the remainder of the relief requested in the Motion. It is
ORDERED that this cause of action be REMOVED from the undersigned’s docket.
IV. WARNINGS
The parties may file objections to this Report and Recommendation. A party filing objections
must specifically identify those findings or recommendations to which objections are being made.
The District Court need not consider frivolous, conclusive, or general objections. See Battle v.
United States Parole Comm'n, 834 F.2d 419, 421 (5th Cir. 1987).
A party's failure to file written objections to the proposed findings and recommendations
contained in this Report within fourteen (14) days after the party is served with a copy of the Report
shall bar that party from de novo review by the District Court of the proposed findings and
recommendations in the Report and, except upon grounds of plain error, shall bar the party from
appellate review of unobjected-to proposed factual findings and legal conclusions accepted by the
District Court. See 28 U.S.C. § 636(b)(1)(C); Thomas v. Arn, 474 U.S. 140, 150-53, 106 S. Ct. 466,
472-74 (1985); Douglass v. United Servs. Auto. Ass’n, 79 F.3d 1415, 1428-29 (5th Cir. 1996) (en
banc).
SIGNED this 29th day of May, 2018.

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ANDREW W. AUSTIN
UNITED STATES MAGISTRATE JUDGE

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