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

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

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Tuesday, March 14, 2023

Recorded event now available

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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.


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.



  1. Factors when deciding to go after foreign infringers
    1. Jurisdiction
    2. Service
    3. Discovery
  2. Recent court guidance
  3. Best practices for enforcement against foreign infringers


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?


Berman, Rod
Rod S. Berman

Partner, Chair of Intellectual Property Group
Jeffer Mangels Butler & Mitchell

Mr. Berman focuses on patent, trademark, trade dress, copyright, unfair competition and internet responsibilities. His...  |  Read More

Grossberg, Lesley
Lesley M. Grossberg

Ice Miller

Ms. Grossberg focuses her practice on all aspects of intellectual property litigation, including patent, copyright,...  |  Read More

Sparkman, Jessica
Jessica B. Sparkman

Jeffer Mangels Butler & Mitchell

Ms. Sparkman represents clients in a variety of industries in all facets of trademark, copyright, and trade secret law,...  |  Read More

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