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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 ?

7

FEDERAL COURT LITIGATION

Federal Court

Subject matter jurisdiction

Personal Jurisdiction

Venue—TC Heartland?

8

9

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

13

14

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

15

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

16

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

17

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

22

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

23

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

29

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

30

QUESTIONS???