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[Albert Capemont]

Hello,

We are a California corporation. However, our trademark is being infringed on by a Texas company. If we wanted to pursue litigation - which circuit courts would have jurisdiction (CA or TX)? The infringement is occuring over the internet (a web site) if that makes any difference. Thanks in advance.

Also - if the infringer has stated in writing that they intend to pre-emptively evade any court orders by transferring funds and data overseas - is there any way to obtain some sort of asset freeze pending the outcome of litigation?

Thanks in advance.

[JSonnabend]

If you are proceeding under Federal trademark law, then you won't be in a Circuit Court at all.  You'll be in a District Court.  Jurisdiction can be tricky, but you're almost always (if not always) safe suing in the Defendant's home jurisdiction.

Regarding the assets and data, there are emergency motions you can pursue, including a TRO and order to show cause on a PI.  Whether or not that's really necessary in the TM infringement context is another question.  

Are you prepared to prove your damages?  Have you done the necessary factual legwork to show infringement and its scope?  If so, you may find the threats are mostly besides the point.

- Jeff

[Albert Capemont]

Thanks Jeff.

If we want to pursue litigation in Texas do we need to find an attorney in Texas or can anyone handle the suit?

[JSonnabend]

While a few federal jurisdictions now have a sort of reciprocity whereby attorneys admitted in other jurisdictions may appear without local counsel, most still require local counsel.  The chances are good, therefore, that you'd at least need a Texas lawfirm to act as local counsel, even if you chose a lawfirm outside of the jurisdiction to act as lead counsel.

- Jeff

[Isaac]

If an attorney is going to appear in a federal district court, he needs to be admitted to practice before that court.    An attorney might be admitted pro hac vice which would require associating with a regularly admitted attorney.

But for general admission to appear in federal court, most federal courts require that the attorney be licensed in that court, but some federal courts will admit any licensed attorney.   For example any attorney licensed in DC or one of the 50 states can be petition admitted to the USDC in the Northern District of Texas as well as the Eastern District of Texas.   I did not check the rules for other federal courts in Texas.

[JSonnabend]

Isaac, you've completely lost me.  What the heck is "licensed in that court"?  If an attorney is not admitted in a particular jurisdiction, he'll have to be admitted pro hac to handle a case there.  The question is whether or not he needs local counsel to do so.  

Perhaps you're saying that some courts will grant admission to attorneys who do not practice in that jurisdiction, thereby obviating the need for pro hac admission?  I've never encountered such a court, but that doesn't mean they don't exist.  If the proper district in Texas has such a rule, then apparently local counsel would not be required.

- Jeff

[Isaac]

Isaac, you've completely lost me.  What the heck is "licensed in that court"?  If an attorney is not admitted in a particular jurisdiction, he'll have to be admitted pro hac to handle a case there.  The question is whether or not he needs local counsel to do so.

I meant "admitted to practice before that court" but got a bit sloppy.  The local rules of the Texas district courts that I listed each allow all  attorneys not having Texas licenses to be admitted to practice before that court.

[JSonnabend]

Got it.  Thanks for the clarification.  I only recently learned of the "reciprocity" arrangement between New York, New Hampshire and Massachussets.  Several colleagues who handle much more litigation than I do were even surprised.  I wonder if this is a relatively recent trend.

- Jeff

[Isaac]

Got it.  Thanks for the clarification.  I only recently learned of the "reciprocity" arrangement between New York, New Hampshire and Massachussets.  Several colleagues who handle much more litigation than I do were even surprised.  I wonder if this is a relatively recent trend.

- Jeff

I don't know if there is a trend.   A few courts such as the Bankruptcy Court in the Western District of Maryland have allowed out of state licensed attorneys to be admitted to appear before the court practically forever.