I sent a cease and desist letter a few weeks ago for common law trademark infringement. The other party has offices in San Francisco and Chicago. However, I think their main legal team is in Chicago. Can they be proactive and sue me first in Chicago forcing me to have to defend myself over there (for something like declaratory judgement or even infringement based on prior use I was unaware of)? The mark is being used on a website. I don't advertise anywhere, its just an online guide. Can the fact that people can access the site in Chicago give the Chicago courts jurisdiction over me? If I did get sued in Chicago, what are my chances with of a lawyer out there winning me a motion to change venue to California where both parties have offices?Btw, I sent the letter to their office in Chicago. I don't know if that makes a difference.
The answer to the question is yes: the opposition can seek a declaratory judgment of non-infringement, and do so in a court that is not convenient for you. We call it the "race to the courthouse," and it is a valuable advantage. You need to discuss this with someone experienced in trademark infringement, because the details are important (you say both parties have offices in California, but the kind of office can be important). Palo Alto has a lot of good attorneys, as does the rest of the Bay Area.
www.bayoaklaw.com. 510-208-5500. This answer does not create an attorney-client relationship. It is not legal advice, because it is only of a general nature. Please contact a lawyer qualified in your jurisdiction to discuss your situation in confidence, using your factual details. Avvo answers are only general legal responses. Item 9 of Avvo.com's Terms and Conditions are incorporated in this disclaimer as though it were printed here.
When you are on the web you open yourself to suit in many other jurisdictions. It is unclear what you may mean by common law trademark (presumably use in commerce without Lanham Act registration.) If the party has offices in San Francisco you may succeed in having the matter moved there, closer to Palo Alto.
The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.
It sounds to me like you have already discussed your case with at least one attorney (whether formally or informally, I do not know and that is fine) and are seeking a second opinion from attorneys in this forum. I say that because the short answer to all of your questions is basically YES, as Mr. Jacobson and Mr. Doland have answered.
Yes, you can be sued where the defendant is if it goes to court there for a declaratory judgment; yes, the fact that the website is accessible in any state (and probably almost anywhere in the world) could very well subject you to jurisdiction in other areas depending upon the nature of the website content and level of interaction with users of the website in the particular state at issue; and yes, if your alleged infringer ends up being able to prove that they have earlier use of the mark at issue than you do, they could very well turn around and claim that you are infringing. The latter issue is precisely why it is highly recommended that an attorney be retained for sending a cease & desist letter and that attorney conducts a due diligence investigation into the merits of your claim and its likelihood of succes before sending any demand letter. Also, very often trademark infringement cases are litigated in federal court in part because the infringement may occur across state lines between parties from different states and also, more commonly, because much of trademark law is governed by federal law - the Lanham Act. The Lanham Act contains provisions creating liability for trademark infringement, false advertising, trademark dilution and unfair competition even when an alleged mark is merely used and not federally registered. The only trigger or requirement necessary for suing under the Lanham Act is a showing that the infringement or violation occurred in interstate commerce.
As to your chances for an attorney being able to remove a lawsuit to your local jurisdiction that the defendant files in their jurisdiction, that depends upon a number of specific facts for which you need to engage an attorney and thoroughly review your case with him/her in confidence.
It sounds like you are involved in a pretty substantial legal matter that could very well end up in litigation so you are strongly advised to consult with and probably engage an experienced trademark attorney as soon as possible.
Alex Butterman is a trademark attorney with Staas& Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C. IP boutique law firm. Alex is admitted to the bars of Washington, D.C., New York and New Jersey but, unless otherwise specified, the answer is intended to be general enough to apply to any U.S. state and based primarily upon his knowledge and experience with applicable federal laws. The opinions expressed are those of the author and do not necessarily reflect the views of his firm, Avvo or other attorneys. This answer is for general information purposes only and is not intended to be and should not be taken as legal advice. No attoreny-client relationship or obligations are established herein, although consulting an attorney to discuss your specific situation is strongly recommended. This is especially true of trademark law and probably any area of intellectual property law because TM law is so fact-specific and full of esoteric nuances and exceptions, that more often than not there does seem to be harm in handling a trademark matter without consulting an experienced trademark attorney.
Q: "Can the fact that people can access the site in Chicago give the Chicago courts jurisdiction over me?"
R: Maybe. Judge David Hamilton is the 7th Circuit's guru on internet-based personal jurisdiction. You should read two of his cases to get a feel for how an Illinois federal court judge will analyze the matter. The first is a case he wrote while still a District Court judge [I convinced him, on reconsideration, that my California client could not be sued for trademark infringement in Indiana] and the second he authored after he was appointed to the Court of Appeals. As others have noted, you need to hire a trademark litigator if you intend to pursue your claims.
The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
You bet they can. You would if you were them. There are a number of reasons why they might choose Chicago other than proximity. Your chances in Chicago of winning on a change of venue are not good. Realize that if it is filed in Chicago, it will likely be done by a Chicago attorney, and that attorney's fees depend on him or her keeping the case there so they will be fighting hard to do that. And, Chicago judges, being busy, are prone to require motions to be argued IN PERSON, which means you are forced to hire local counsel or surely lose. For you, who are asking on a free site, that likely means an expense you may not be able to cover. All the more reason you should expect any DJ suit to be in Chicago. In all probability the relevant evidence for their DJ suit is, in fact, in Chicago if that is where their main business office is located, and that is where the affected IP is likely located.
This is why you are advised to get to an IP lawyer's office ASAP and review that CDL and correct it with a substitute if need be.
So far, this is free to you. Until you pay a fee, I am not your lawyer and you are not my client, so you take any free advice at your sole risk. I am licensed in IL, MO, TX and am a Reg. Pat. Atty. so advice in any other jurisdiction is general advice and should be confirmed with an attorney licensed in that jurisdiction.
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