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 THURSDAY, JULY 6, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Megan K. Bannigan, Counsel, Debevoise & Plimpton , New York Meredith M. Wilkes, Partner, Jones Day , Cleveland The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
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Navigating Venue and Jurisdiction in Trademark Cases 5 J U L Y 6 , 2 0 1 7 MEGAN K. BANNIGAN, ESQ. MEREDITH M. WILKES, ESQ.
Introduction 6 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
FEDERAL COURT LITIGATION 7 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 ?
8 Federal Court Subject matter jurisdiction Personal Jurisdiction Venue — TC Heartland?
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
13 Key considerations Federal Court Litigation Type of case Advantages : Nature of the relationship between the Nationwide remedies available pursuant to 15 parties USC § 1117 Relationship between parties and Developed body of law forum Nationwide subpoena Relief sought power
State Court Litigation 14
15 Advantages State Court Litigation Provides enforcement mechanism for a plaintiff whose trademarks do not meet -State courts have concurrent jurisdiction federal requirements (e.g., interstate with federal courts over commerce) trademark and unfair competition actions brought under the Punitive damages Lanham Act Home team advantage
TTAB Litigation 16 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
17 Advantages TTAB Proceedings Most cases settle, or resolve with entry of default Administrative proceedings, relief Clears the register of potentially limited to the infringing/problematic marks without application or the registration at issue full blown litigation Accelerated Case Resolution (“ACR”) Use is not enjoined Usually faster resolution No monetary relief
18 Carefully consider bringing a TTAB action TTAB Litigation Possible Preclusive Effect B&B Hardware, Inc. v. Hargis Industries, Inc. Issues held to have similar standards: 135 S. Ct. 1293 (2015) Likelihood of confusion Priority Fraud at the PTO Appeal an unfavorable TTAB decision???
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
ITC ENFORCEMENT 22 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
23 19 U.S.C.§ 1337 empowers the ITC to International conduct investigations into allegations Trade of certain unfair practices in import Commission trade Independent, quasi- judicial Federal agency Most investigations involve patent with broad investigative responsibilities on claims matters of trade 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
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.
UDRP DOMAIN NAME PROCEEDINGS 26 D O M A I N N A M E R E C O V E R Y
27 UDRP Complaint UDRP Actions Requirements Expedited proceedings targeted solely to bad (1) the manner in which the domain faith registration and name(s) is/are identical or confusingly use of domain names similar to a trademark or service mark in Usually no hearings or which the Complainant has rights; and discovery Arbitration proceeding (2) why the Respondent (domain-name with a 1 or 3 member holder) should be considered as having no panel that is quickly rights or legitimate interests in respect of resolved, but can be the domain name(s) that is/are the subject appealed 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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