Trademark Wars

The United States District Court for the District of Columbia (Judge Bates) has ruled that it lacks jurisdiction over a trademark dispute between employment law firms

In sum, neither of the two paragraphs of the D.C. long-arm statute relied on by TELG authorize personal jurisdiction in this case. Neither Brady’s adoption of the allegedly infringing “San Diego Employment Law Group” name nor his transmission of the allegedly tortious June 15 Letter to TELG’s attorneys constitutes the kind of purposeful connection with the District of Columbia necessary for personal jurisdiction under the D.C. long-arm statute or the Due Process Clause. In addition, TELG failed even to allege an injurious “act . . . in the District of Columbia” as required by paragraph (a)(3), and so far as the Court can tell, no such act occurred. TELG has thus failed to meet its burden of demonstrating jurisdiction, and the Court concludes that it does not possess personal jurisdiction over the sole defendant in this matter.

But dismissal was not the remedy

the Court finds that transfer to the Southern District of California under 28 U.S.C. § 1406(a) is both available and in the interest of justice.

Dramatis personae

The Employment Law Group, P.C., (“TELG”) is a legal services provider headquartered in Washington, D.C., specializing in (as one might expect) employment law matters such as whistleblower representation and workplace discrimination. See Compl. [ECF No. 3-1] ¶¶ 2, 11; Compl. Ex. 3 [ECF No. 1-2] at 8–9; see also Mem. in Opp’n to Def.’s Mot. to Dismiss [ECF No. 27] (“Pl.’s Opp’n”) at 1. TELG has used that name since 2000, and it registered trademarks on the name and an associated logo in 2008. Compl. ¶ 7; Compl. Exs. 1 & 2 at 2, 5. TELG alleges that, “[a]s a result of [its] expenditures and efforts, [its mark] has come to signify the high quality of the services designated by the mark, and has acquired incalculable distinction, reputation, and goodwill belonging exclusively to TELG.” Compl. ¶ 13.

Defendant Dennis Brady is an attorney in San Diego, California, and one of his several trade names is “San Diego Employment Law Group” (“SDELG”). See, e.g., Compl. Ex. 4 at 12–13 (listing other names under which Brady conducts business); Compl. Ex. 5 at 15–16 (screenshots of the SDELG website). Brady registered the SDELG name with the state of California in November 2017, many years after TELG registered its trademark. Compl. Ex. 4 at 12–13. Under the SDELG moniker, Brady seeks out clients in the San Diego area and the Imperial Valley for a variety of employment law matters, Mem. of P. & A. in Supp of Def.’s Mot. to Dismiss [ECF No. 25-1] (“Def.’s Mot.”) at 1 & n.2, including (like TELG) “wrongful termination, discrimination, sexual harassment, wage and hour claims, [and] whistleblowing,” Compl. Ex. 5 at 15.

The litigation followed a dease-and-desist letter. (Mike Frisch)