[E-trademarks] Jurisdiction over foreign client accused of TM infringement in the US

Thu Nov 14 16:06:37 UTC 2024

Seconding this. I’ve known a fellow for about 10 years now whose practice is exclusively Hague service for situations similar to this one.

Bob Reynolds
Senior Counsel
Klintworth & Rozenblat IP LLP
2045 W. Grand Ave, Ste B PMB 84396
Chicago, Illinois 60612
direct 773.770-2554  fax 773.570.3328
rreynolds at kandrip.com<mailto:rreynolds at kandrip.com>
www.kandrip.com<http://www.kandrip.com/>

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Dale Quisenberry via E-trademarks
Sent: Wednesday, November 13, 2024 7:44 PM
To: Jessica R. Friedman <jrfriedman at litproplaw.com>; e-trademarks at oppedahl-lists.com
Cc: Dale Quisenberry <dale at quisenberrylaw.com>; e-trademarks at oppedahl-lists.com
Subject: Re: [E-trademarks] Jurisdiction over foreign client accused of TM infringement in the US

You would serve them in France, most likely via the Hague Convention.  Happens all the time.

C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>

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From: Jessica R. Friedman <jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>>
Date: Wednesday, 13 November 2024 at 6:15 pm
To: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>, e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Subject: Re: [E-trademarks] Jurisdiction over foreign client accused of TM infringement in the US
Thanks, Dale. But how would they get jurisdiction over a company that has no office or agent here? On whom would they serve process?

I suppose they could serve process on someone from the company who happened to come over here for a conference or something, but otherwise…?.

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

[1479430908386_PastedImage]

From: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>
Date: Wednesday, November 13, 2024 at 6:58 PM
To: e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Cc: Jessica R. Friedman <jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>>, e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com> <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>, Jessica R. Friedman <jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>>
Subject: Re: [E-trademarks] Jurisdiction over foreign client accused of TM infringement in the US
See below

Best regards,

Dale

C. Dale Quisenberry
Quisenberry Law PLLC
832.680.1000

Sent from my iPhone

On Nov 13, 2024, at 5:44 PM, Jessica R. Friedman via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:

  *   Client operates and has offices in France. Client uses CLOUD SECURES (hypothetical) to identify its cybersecurity consulting services and has a WIPO registration for that mark for those services. Occasionally Client provides its services to a US company and, in such cases, may work with a US contractor.

  *   USCo provides cybersecurity consulting services in the U.S. under the mark CLOUD. USCo sends Client a c&d letter accusing Client of infringing its CLOUD trademark by allegedly using CLOUD SECURES here in the U.S.

  *   Without Client’s having an office or agent here, is there any basis for USCo to assert jurisdiction over Client here?

I say yes.  They are providing services under the alleged infringing mark in the US.  Why wouldn’t they be subject to jurisdiction in the US?

  *   Could the US contractors that Client uses be considered its agents so as to confer jurisdiction?

Don’t think that is necessary.

  *

  *   Is there any basis for USCo’s suing Client in France for the trademark infringement that USCo claims Client is committing here?

Need input from French counsel on that.  I am aware of case law that allows a US federal court to adjudicate copyright infringement claims arising under Canadian law.

By the way, if anyone has an Office Action response that says situation like this —— CLOUD SECURES does not infringe trademark on CLOUD—- would appreciate a serial number I could look up.

  *

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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