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).


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.


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


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?


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.


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

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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.)

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Program Materials

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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


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


Winthrop & Weinstine

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Ian N. Feinberg


Feinberg Day Alberti & Thompson

Bassam N. Ibrahim


Buchanan Ingersoll & Rooney

Mark P. Wine



or call 1-800-926-7926

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