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Presenting a live 90-minute webinar with interactive Q&A
Navigating Venue and Jurisdiction
in Trademark Cases Determining the Best Forum for Pursuing or Defending Infringement Claims
Today’s faculty features:
1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific
THURSDAY, JULY 6, 2017
Megan K. Bannigan, Counsel, Debevoise & Plimpton, New York
Meredith M. Wilkes, Partner, Jones Day, Cleveland
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J U L Y 6 , 2 0 1 7
M E G A N K . B A N N I G A N , E S Q .
M E R E D I T H M . W I L K E S , E S Q .
5
Navigating Venue and Jurisdiction in Trademark
Cases
O P T I O N S F O R A T R A D E M A R K O W N E R
- F E D E R A L C O U R T
- S T A T E C O U R T
- T T A B
- I T C
- U D R P
6
Introduction
W H E R E T O F I L E ?
O N W H A T B A S I S ?
W I L L T H E C A S E S T A Y T H E R E ?
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FEDERAL COURT LITIGATION
Federal Court
Subject matter jurisdiction
Personal Jurisdiction
Venue—TC Heartland?
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Federal Court
Standing
Willful Infringement for Profits? 10
Fee Shifting—Octane Fitness 11
Other Circuit Splits 12
Presumption of Irreparable Harm
Aesthetic Functionality
Initial Interest Confusion
Nominative Fair Use
Federal Court Litigation
Advantages:
Nationwide remedies available pursuant to 15 USC § 1117
Developed body of law
Nationwide subpoena power
Key considerations
Type of case
Nature of the relationship between the parties
Relationship between parties and forum
Relief sought
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State Court Litigation
State Court Litigation
-State courts have concurrent jurisdiction with federal courts over trademark and unfair competition actions brought under the Lanham Act
Advantages
Provides enforcement mechanism for a plaintiff whose trademarks do not meet federal requirements (e.g., interstate commerce)
Punitive damages
Home team advantage
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O P P O S I T I O N
C A N C E L L A T I O N
A P P E A L
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TTAB Litigation
TTAB Proceedings
Administrative proceedings, relief limited to the application or the registration at issue
Use is not enjoined
No monetary relief
Advantages
Most cases settle, or resolve with entry of default
Clears the register of potentially infringing/problematic marks without full blown litigation
Accelerated Case Resolution (“ACR”)
Usually faster resolution
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TTAB Litigation
Possible Preclusive Effect
B&B Hardware, Inc. v. Hargis Industries, Inc. 135 S. Ct. 1293 (2015)
Carefully consider bringing a TTAB action
Issues held to have similar standards:
Likelihood of confusion
Priority
Fraud at the PTO
Appeal an unfavorable TTAB decision???
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TTAB Appeals—Where? 19
Appeals from the trademark office
Federal Circuit: no new evidence
District Court: new evidence, new record
Fee Shifting 20
§ 1071 Appeal to courts
(b) Civil action…
(3) In any case where there is no adverse party, ... unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not. 15 U.S.C. § 1071(b)(3) (emphasis added)
USPTO Attorneys’ Fees Rule 21
NantKwest v. Lee (E.D. Va. 2016)
The district court granted summary judgment for the PTO, but denied the PTO’s motion for expenses regarding attorneys fees
American Rule forbids attorneys fees because 35 U.S.C. Section 145 does not “specifically and explicitly” allow for payment of such fees
NantKwest v. Lee (Fed. Cir. 2017)
Applicants who appeal, pay PTO fees
“all expenses” regardless of outcome
D O M E S T I C I N D U S T R Y
A C T O F I M P O R T A T I O N
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ITC ENFORCEMENT
International Trade Commission
Independent, quasi-judicial Federal agency with broad investigative responsibilities on matters of trade
19 U.S.C.§ 1337 empowers the ITC to conduct investigations into allegations of certain unfair practices in import trade
Most investigations involve patent claims
But, section 337 also applies to trademark and trade dress infringement, misappropriation of trade secrets, passing off, false advertising, and violations of the antitrust laws
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Advantages of ITC Proceedings 24
Expedited Relief ITC rules within 12 -18 months after an investigation
instituted; orders effective within 60 days of issuance
Broad Injunctive Power Customs can block all importation of infringing items,
regardless of whether importer was named in the investigation Lower injunction standard (federal court uses eBay four-factor
analysis)
In rem/Nationwide jurisdiction Multiple companies can be named in a single action without
concern for personal jurisdiction issues
Limitations to ITC Proceedings 25
Expedited Proceedings – Stays are very difficult to obtain.
Higher Costs – caused by timeline, international depositions, expert evidence. Third Party Presence – Commission Investigative Attorney can impact the
outcome of case.
No Monetary Damages
Importation Requirement – requires a non-U.S. defendant who is importing goods into the U.S.
Domestic Industry Requirement - plaintiff must prove that it has established a “domestic industry” in the U.S. through evidence of sales, operations, employment, etc.
D O M A I N N A M E R E C O V E R Y
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UDRP DOMAIN NAME PROCEEDINGS
UDRP Actions
Expedited proceedings targeted solely to bad faith registration and use of domain names
Usually no hearings or discovery
Arbitration proceeding with a 1 or 3 member panel that is quickly resolved, but can be appealed
UDRP Complaint Requirements
(1) the manner in which the domain
name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
(3) why the domain name(s) should be considered as having been registered and being used in bad faith
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The Litigation Options
Federal Court Litigation State Court Litigation TTAB ITC
Speed Varies widely Varies widely Relatively quick ~ 2 years if
all the way through trial Very fast, 12-18 months.
Cost Can be expensive Varies, generally less expensive
than federal litigation.
Previously, relatively inexpensive, but with B&B
that could change.
Because of speed, can be less expensive than
district or state court, may or may not stay a parallel
district court case.
Remedy
Monetary damages; injunction; cancellation of registration;
additional damages/remedies for willful infringement, exceptional
cases, and use of counterfeit mark
Monetary and punitive damages; injunction.
Cancellation of registration/rejection of
application; no damages or injunctions available
Injunctive relief only; no monetary damages.
Appeal Yes, to federal court of appeals. Yes, to state court of appeals.
Yes, can choose Federal Circuit (limited to record
below) or district court (de novo review)
Yes, can appeal to Federal Circuit.
Venue Restrictions
Yes, see 28 USC § 1391. Effect of TC Heartland to be considered.
Varies based on state venue statutes; may be subject to removal to federal court if
federal claims involved.
Application or registration depending on the proceeding,
may have standing issues
Plaintiff must be able to establish “domestic
industry” in the U.S. and an act of importation.
A S A P L A I N T I F F W H A T I S T H E I P A T I S S U E ? W H A T R E L I E F I S S O U G H T ? W H O I S T H E D E F E N D A N T ? W H E R E A R E T H E Y I N F R I N G I N G ? W H A T O T H E R C L A I M S M A Y E X I S T ? A S A D E F E N D A N T I R R E P A R A B L E H A R M P R E S U M P T I O N ? H O M E T U R F A D V A N T A G E ? E A R L Y M O T I O N P R A C T I C E ? I M P A C T V E N U E / J U R I S D I C T I O N
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STRATEGIC CONSIDERATIONS
M E G A N K . B A N N I G A N , E S Q .
M K B A N N I G A N @ D E B E V O I S E . C O M
M E R E D I T H M . W I L K E S , E S Q .
M W I L K E S @ J O N E S D A Y . C O M
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QUESTIONS???
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