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

[Jessica R. Friedman]

Missed one of Dale’s comments. The trademarks I mentioned were completely hypothetical, but if CLOUD was a weak element of registered marks for cybersecurity, and CLOUD itself was not yet registered, then IMHO, whether CLOUD SECURES infringed just plain CLOUD would not be so clear.

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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From: Dale Quisenberry <dale at quisenberrylaw.com>
Date: Wednesday, November 13, 2024 at 6:58 PM
To: e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
Cc: Jessica R. Friedman <jrfriedman at litproplaw.com>, e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>, Jessica R. Friedman <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> 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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