EDVA Court Rules Trademarks May Be "In Use" in a State Even if a Defendant Not Subject to Personal Jurisdiction
In a small, but interesing decision, Chief Judge Spencer of the EDVA made clear that a plaintiff may assert state law trademark infringement claims even if the defendant is not subject to personal jurisdiction in the state at issue. In M. Shanken Comm’s., Inc. v. Variant Events, LLC,Case No. 3:10CV804, 2011 U.S. Dist. LEXIS 56138 (E.D.Va. May 25, 1011) (Spencer, J.) (found here), the plaintiff, Shanken, alleged trademark infringement, trademark dilution and unfair competition under New York law. The defendant, Variant, moved to dismiss those claims on the grounds that it did not use the marks at issue in connection with goods sold or services rendered in New York. Variant's only connection with New York was that it had a passive website which could be accessed by New York residents, and it sent "save the date" emails, flyers and corporate sponsorship packages to organizations across the country, including New York. Variant pointed to a prior ruling in the case in which a New York federal court ruled that these contacts were insufficient to subject it to personal jurisdiction in federal court.
Judge Spencer denied the motion to dismiss, distinguishing between the standards for personal jurisdiction and for whether trademarks are “in use” in a state. While Variant’s passive website did not create personal jurisdiction in New York, the marks were still “in use” in New York. While not a significant decision, it points out that a plaintiff can make use of state trademark laws from anywhere in the U.S. as long as the defendant meets the low threshold of putting the marks "in use" in that state through advertising.
