Navigating Venue and Jurisdiction in Trademark Cases

Determining the Best Forum for Pursuing or Defending Infringement Claims

Recording of a 90-minute CLE webinar with Q&A


Conducted on Thursday, July 6, 2017
Recorded event now available


This CLE webinar will provide guidance to trademark counsel for developing jurisdiction and venue strategies. The panel will discuss key considerations that parties should be aware of and offer best practices for navigating jurisdiction and venue issues when litigating trademark cases in federal court, state court, before the USPTO or in the International Trade Commission (ITC).

Description

There are many factors that trademark litigators and their clients should take into account before considering whether there is jurisdiction and then selecting a venue in a trademark infringement case—especially when the trademark owner plans to seek injunctive relief—between federal court, state court, the USPTO or the ITC.

The path to federal court jurisdiction involves complex rules and tight time frames for removal. The rules among federal courts are inconsistent regarding many removal issues. Counsel must understand the complex rules and also consider what happens if the court determines the venue is improper.

The Supreme Court in TC Heartland v. Kraft Food Brands Group (U.S. May 22, 2017) reestablished more restrictive venue rules for patent litigation. Trademark owners and their counsel should evaluate the Heartland decision when considering venue in trademark litigation.

Listen as our authoritative panel of trademark attorneys examines the factors plaintiffs should weigh before filing trademark infringement actions. The panel will also discuss the options for removal and the complex rules involved. The panel will offer best practices for navigating venue and jurisdiction in trademark cases.

Outline

  1. State court trademark litigation
  2. Federal court trademark litigation
  3. Opposition and cancellation proceedings before the USPTO
  4. Trademark cases in the ITC

Benefits

The panel will review these and other key issues:

  • What factors should trademark counsel consider when determining venue? When challenging venue?
  • What strategies can IP counsel use when asserting or challenging jurisdiction in trademark cases?
  • What strategies have been effective for trademark counsel when developing, pursuing or defending motions to transfer venue?

Faculty

Megan K. Bannigan, Counsel
Debevoise & Plimpton, New York

Ms. Bannigan specializes in trademark, copyright, false advertising, rights of publicity, licensing and other contractual disputes and related matters. She represents clients across a range of industries, including fashion and luxury goods, entertainment, professional sports, pharmaceuticals, consumer products and financial services. Ms. Bannigan has extensive trial experience as well as experience representing clients before the USPTO, the TTAB and the International Trade Commission. She is a frequent speaker on IP issues and is an adjunct professor at Rutgers School of Law. 

Meredith M. Wilkes, Partner
Jones Day, Cleveland

Ms. Wilkes is a trial lawyer whose practice is focused on brand protection and enforcement. She has led high-stakes trademark, trade dress, trade secret, false advertising, unfair competition, and design patent litigation for global brands in federal and state courts throughout the U.S. Ms. Wilkes also counsels clients on brand selection and clearance strategies worldwide from searching to filing to enforcement. She is a frequent speaker on brand issues and is Co-Leader of the firm's global Trademarks, Unfair Competition & Copyrights Group.


Recordings

CLE On-Demand - Streaming Video

Includes recorded streaming video of full program plus PDF handouts.

On-demand is the only recorded format recognized for CLE credits in DE, IN, KS, LA, MS, NC, OH, OK, SC, TN, VA, WI.

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*Only available for attorneys admitted for more than two years. For OH CLE credits, only programs recorded within the current calendar year are eligible - contact the CLE department for verification.

**NH attendees must self-determine if a program is eligible for credit and self-report their attendance.

CLE On-Demand Video $297.00

How does this work?


Recorded Event

Includes full event recording plus handouts.

Strafford is an approved provider and self-study CLE credit is available in most states.

AK, AZ, CA, CO, CT, FL, GA, HI, IA, ID, IL, KY, ME, MN, MO, MT, ND, NJ, NM, NY, OR, PA, TN, TX, UT, VT, WA, WV, WY (Note: Some states restrict CLE eligibility based on the age of a program. Refer to our state CLE Map for additional information.)

Strafford will process CLE credit for one person on each recording.

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Recorded Webinar Download $297.00

How does this work?

Recorded Audio Download (MP3) $297.00

How does this work?


Webinar

Strafford webinars offer several options for participation: online viewing of speaker-controlled PowerPoint presentations with audio via computer speakers or via phone; or audio only via telephone (download speaker handouts prior to the program).  Please note that our webinars do not feature videos of the presenters.

Program Materials

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Program Materials

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CLE Credits

Many states grant CLE credits for on-demand streaming audio programs and recorded events. Our programs are pre-approved in many states. Refer to our state CLE map for state-specific information.

or call 1-800-926-7926

Customer Reviews

I appreciated each speaker’s focus on the most important areas to consider and felt they were, without a doubt, experts on the subject matter.

Tricia Littrell

NGRAIN

Ms. Morrison provides trademark and brand protection services with significant industry intelligence in the food and beverage, restaurant, healthcare, entertainment, and technology industries. Her practice provides efficient counsel to support the domestic and foreign trademark maintenance, clearance, registration, strategic brand protection and enforcement, and licensing needs of her clients.

Sheila Fox Morrison

Davis Wright Tremaine

I thought Strafford's program provided good information without being too lengthy.

Erin Aures

McCarter & English

The speakers seemed knowledgeable enough to talk about the subject matter in an easily digestible manner.

Daniel M. Cleary

Gotham Insurance/New York Marine & General Insurance

The speakers stayed on point and covered the topic thoroughly.

Daiva Tautvydas

or call 1-800-926-7926

Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Locke Lord

David S. Bloch

Partner

Winston & Strawn

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Bassam N. Ibrahim

Shareholder

Buchanan Ingersoll & Rooney

Mark P. Wine

Partner

Orrick

or call 1-800-926-7926

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Strafford webinars are backed by our 100% Unconditional Money-Back Guarantee: if you are not satisfied with any of our products, simply let us know and get a full refund. For more information regarding complaints and refunds, please contact us at 1-800-926-7926 ext 10. Complaints regarding this program can be submitted via the course evaluation found in the “Thank you” e-mail at the end of the course.