Trademark Enforcement and Foreign Infringers: Navigating Jurisdiction, Methods of Service, Discovery

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, March 14, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide IP attorneys dealing with trademark enforcement involving foreign infringers. The panel will discuss key considerations, including jurisdiction, service, and discovery, when determining when to go after foreign infringers. The panel will discuss recent court guidance on these issues and offer best practices for enforcement against foreign infringers.
Faculty

Ms. Grossberg focuses her practice on all aspects of intellectual property litigation, including patent, copyright, trademark, trade secret and unfair competition litigation, as well as trademark prosecution and enforcement. Her experience extends to the e-commerce, financial services, social media, software, consulting, telecommunications and food services industries. Ms. Grossberg represents clients in federal district and appellate court litigation, as well as in inter partes proceedings before the Trademark Trial and Appeal Board (TTAB). She also represents clients in commercial litigation matters, including breach of contract, fraud and other general business cases, before state and federal courts and administrative agencies.

Ms. Sparkman represents clients in a variety of industries in all facets of trademark, copyright, and trade secret law, including selection and acquisition, protection, federal trademark application and registration, opinions, portfolio management, enforcement, co-existence and settlement agreements, domain names, and litigation. She has experience managing portfolios of more than 2000 trademark registrations, has applied for or maintained trademark registrations in more than 150 countries, and has managed a global trademark monitoring and enforcement program involving hundreds of proceedings and negotiations in more than 50 countries. Ms. Sparkman counsels clients about agreements to acquire, sell, and protect intellectual property, including assignments, acquisitions, licenses, and non-disclosure and confidentiality agreements, and has performed due diligence for clients in numerous large transactions. She also litigates trademark, unfair competition, copyright, patent, trade secret, and privacy rights cases in state and federal court, and has extensive experience practicing before the TTAB.

Mr. Berman focuses on patent, trademark, trade dress, copyright, unfair competition and internet responsibilities. His practice includes counseling, litigation, opinions, licensing, acquisition and prosecution. Mr. Berman represents many nationally and internationally known clients, and has been involved in a number of published patent, trademark and copyright cases in a wide variety of industries. He has worked on a broad range of matters including those involving aircraft, apparel, automotive, beauty care, bicycles, biotechnology, cannabis products including CBDs, hemp and extraction techniques, celebrity endorsement, computer-related business methods, dietary and nutritional supplements, electrochemistry, food and restaurants, health care, inflatables, insecticides, jewelry, medical devices, packaging, pharmaceuticals, polymers, pressure sensors, retail, special effects, sports and entertainment, and toys.
Description
Enforcing trademarks against foreign entities can be challenging and expensive. There are several factors that trademark owners should consider when determining whether to pursue a foreign infringer. Among the considerations are jurisdiction, service, and discovery.
A court can exercise personal jurisdiction over a foreign defendant if the defendant established minimum contacts with the forum state and exercising of jurisdiction over that defendant would not offend notions of fair play and substantial justice. When the defendant is outside the U.S., this is more difficult to demonstrate. A recent decision by the district court in the Northern District of Texas concluded the foreign defendant's website activity was enough for the court to exercise personal jurisdiction over that defendant. Shippitsa Ltd. v. Slack (N.D. Tex. 2019)
Service of process also poses challenges for companies pursuing foreign infringers. However, in a recent decision by the Ninth Circuit, the court held that trademark plaintiffs can effect process on foreign defendants by serving the Director of the U.S. Patent and Trademark Office. San Antonio Winery Inc. v. Jiaxing Micarose Trade Co. Ltd. (9th Cir. Nov. 14, 2022) This provides another method for serving process that is quicker than using the Hague Convention. However, how far the Ninth Circuit's decision will reach has yet to be seen.
Listen as our authoritative panel of IP attorneys examines key factors when determining when to go after foreign infringers. The panel will address issues related to jurisdiction, use of the Hague Convention or the PTO Director for service, and discovery. The panel will discuss recent decisions that provide guidance on these issues and offer best practices for enforcement against foreign infringers.
Outline
- Factors when deciding to go after foreign infringers
- Jurisdiction
- Service
- Discovery
- Recent court guidance
- Best practices for enforcement against foreign infringers
Benefits
The panel will review these and other key issues:
- What factors should IP counsel weigh when advising U.S. trademark owners about pursuing foreign infringers?
- What guidance do recent court decisions provide for trademark owners seeking to pursue foreign infringers?
- What best practices should counsel employ for enforcing trademark rights against foreign infringers?
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