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

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.