On Wednesday, July 26th, Madison, WI-based chocolatier CocoVaa, LLC filed a complaint for declaratory relief against candy-making giant Mars Inc. of McLean, VA. The complaint seeks a judgment that the standard character mark “COCOVAA” does not infringe upon Mars’ trademark for “COCOAVIA”, a nutritional supplement derived from cocoa designed to improve blood flow. The case has been filed in the Western District of Wisconsin.
CocoVaa’s complaint for declaratory relief follows a trademark infringement suit filed by Mars this March against CocoVaa. In that suit, which was filed in the Eastern District of Virginia, Mars alleged that CocoVaa’s use of the mark constituted infringement, false designation of origin, unfair competition and cancellation of a federal trademark registration. Mars noted that it introduced the CocoaVia brand in 2003, originally as a line of dark chocolate bars and chews and expanding to chocolate-covered almonds, read-to-drink beverages, capsule supplements and powder supplements. Mars targeted CocoVaa, alleging that it recently began a nationwide sales campaign of cocoa-based chocolate products under the CocoVaa name, which Mars said was “virtually identical to the COCOAVIA® Mark.”
On May 15th, CocaVaa and its owner, Syovata Edari, filed a motion to dismiss the case for lack of personal jurisdiction. In a memorandum filed with the motion to dismiss, CocoVaa argued that Mars was attempting “to haul Defendants into a court nearly 850 miles from their only place of business in Madison, Wisconsin.” Not only did CocoVaa have no physical presence within the Commonwealth of Virginia, the memo stated, but it has not made, consumed or sold any of the confections targeted by Mars’ trademark infringement allegations. “Defendants operate a small, local chocolate shop in Madison, Wisconsin, which is open to sell confections primarily to local consumers one day a week,” CocoVaa’s memo reads.
On May 30th, Mars contested the motion to dismiss. The candy giant argued that CocoVaa has been engaging in online and phone sales in an attempt to expand its business nationwide. Although CocoVaa alleges that it doesn’t target Virginia with any direct marketing, the website itself is not limited geographically and Mars cites a declaration filed which indicates that Edari has told customers that she has shipped orders to Virginia. Further, Mars alleged that Edari’s argument that it would be too difficult to travel to Virginia for litigation “cannot be accepted” in light of the fact that she trained as a chocolatier in France. “Her ability to manage her business and law practice in order to be able to make these lengthy trips abroad refutes the notion that she cannot make the few brief trips that might be required by litigating in Virginia,” Mars’ opposition reads. (Edari also practices a criminal defense law in the Madison area.)
On June 12th, CocoVaa filed a reply brief in support of its motion to dismiss. CocoVaa charged that Mars attempted to “manufacture” jurisdiction by coordinating purchases within Wisconsin of Wisconsin-made chocolate which was then shipped as a gift into Virginia; the Wisconsin chocolatier maintained that it does not conduct transactions in Virginia. As well, Mars couldn’t establish minimum contacts within the jurisdiction based on the website as the website is passive and doesn’t include e-commerce capabilities, CocoVaa alleged. “A plaintiff cannot be said to have purposefully availed itself of the privilege of conducting activities in a forum based on sales orchestrated only by a plaintiff,” CocoVaa’s June 12th brief reads. On July 6th, a court order issued by the Eastern District of Virginia granted CocoVaa’s motion to dismiss for lack of jurisdiction.
In the complaint for declaratory relief recently filed by CocoVaa in the Western District of Wisconsin, the company notes that, despite the recent granting of the motion to dismiss for lack of jurisdiction, CocoVaa has reason to believe that Mars will again try to file suit in a distant venue. CocoVaa also alleges that there is significant differentiation between its products and the health supplements marketed by Mars. “CocoVaa Chocolatier does not produce anything that would qualify as a health-enhancing foodstuff, and its products are arguably the opposite – confectionary indulgences,” the complaint reads. At the time of the complaint’s filing, CocoVaa’s retail location only operated on Saturdays and conducted most of its sales in the Madison area.