Generally, the answer is no. Most trademark infringement cases are based on federal trademark laws and are filed in federal courts. There are federal courts in every state. While it is true that lawyers are generally licensed to practice law in the state where they live, attorneys that handle cases based on federal law can handle cases in any federal court. There can be some practical difficulties — such as appearing before a federal judge in a distant state. But, the experienced trademark attorney handling your trademark infringement case can hire a local attorney to handle the case management and other routine court calls. Also, federal courts are increasingly allowing court appearances via phone and other electronic methods. This is another option for handling the minor practical difficulties.

Because of this, if you need to file a trademark infringement case in federal court, the best practice is to hire the most experienced and proven trademark law firm that you can regardless of location. Revision Legal is one such trademark law firm and we encourage you to call us for a consultation at 231-714-0100 or 855-473-8474. We handle complex trademark litigation across the country. If you are searching for the “best Trademark Law Firm,” call us.

The other reason for hiring the best trademark law firm that you can is that where to file the trademark infringement case is never obvious. This is because the question of where the infringement occurred can be a debatable factual question. More importantly, where the infringement occurred is not the only question that a court will evaluate when determining which court is the proper court to handle the case. Legally, the question of which court is the proper court is called the question of VENUE. With federal trademark law, there is nothing in the trademark statute that defines which court has the proper venue. Thus, the federal courts look to various factors to determine where the venue is proper. It must also be noted that more than one court location could be considered a proper venue. This provides some options for a plaintiff who is filing a trademark infringement case.

Federal vs. State Court for Trademark Infringement

The Lanham Act, 15 U.S.C. § 1051 et seq., is the governing federal statute for registered trademark infringement claims. Federal district courts have subject matter jurisdiction over Lanham Act claims under 28 U.S.C. § 1338, which grants federal courts original and exclusive jurisdiction over civil actions arising under any act of Congress relating to trademarks. This means registered trademark infringement claims must be filed in federal court—state courts cannot hear them.

State courts, however, retain jurisdiction over common-law trademark infringement claims. Common-law trademark rights arise from actual use of a mark in commerce, independent of federal registration. If a trademark owner asserts only common-law rights—perhaps because their mark is unregistered or their registration is still pending—they can bring their infringement claim in state court. In practice, many infringement cases involve both federal and state claims, and the federal court will typically exercise supplemental jurisdiction over the state claims under 28 U.S.C. § 1367, keeping the entire dispute in one forum.

How Courts Determine Venue for Trademark Infringement Cases

Because the Lanham Act contains no specific venue provision, courts apply the general federal venue statute, 28 U.S.C. § 1391. Under that statute, venue is proper in any district where: (1) any defendant resides, if all defendants reside in the same state; (2) a substantial part of the events or omissions giving rise to the claim occurred; or (3) any defendant is subject to personal jurisdiction at the time the action is commenced, if there is no other district where the action may otherwise be brought.

For trademark infringement, “a substantial part of the events giving rise to the claim” often means the place where the infringing goods were sold or distributed, the place where the defendant operates its primary business, or the place where the plaintiff suffered the primary impact of the infringement. When an infringer operates a nationwide e-commerce business, courts have found venue proper in multiple districts, giving the plaintiff strategic flexibility. Choosing the right venue—particularly a court with favorable procedural rules or a track record of granting preliminary injunctions in trademark cases—is a material strategic decision that experienced trademark counsel can navigate.

Elements of a Federal Trademark Infringement Claim

To prevail on a trademark infringement claim under 15 U.S.C. § 1114, a plaintiff with a federally registered trademark must prove: (1) the plaintiff owns a valid, registered trademark; (2) the defendant used the mark in commerce without authorization; and (3) the unauthorized use is likely to cause consumer confusion as to the source, sponsorship, or affiliation of the goods or services.

The likelihood-of-confusion analysis is the heart of most trademark infringement cases. Courts in most circuits apply a multi-factor test, the specific factors varying somewhat by circuit. The key factors courts consistently consider include: the strength of the plaintiff’s mark; the degree of similarity between the marks; the relatedness of the goods or services; the sophistication of the relevant consuming public; evidence of actual consumer confusion; and the defendant’s intent in adopting its mark. No single factor is dispositive; courts weigh the factors collectively.

Remedies Available in Trademark Infringement Cases

The Lanham Act provides a range of remedies that make federal trademark infringement litigation a powerful enforcement tool. Under 15 U.S.C. § 1117, a successful plaintiff can recover:

• Defendant’s profits: All profits the infringer derived from the unauthorized use of the mark, subject to the court’s equitable discretion to increase or decrease the amount based on the circumstances.
• Actual damages: Damages the plaintiff suffered as a result of the infringement, which can include lost sales, lost licensing revenue, and harm to the mark’s reputation and goodwill.
• Enhanced damages: In cases of willful infringement, the court may award up to three times actual damages.
• Attorney’s fees: In exceptional cases—defined as cases standing out from others with respect to the substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated—the court may award attorney’s fees to the prevailing party.
• Injunctive relief: Courts routinely grant permanent injunctions against continued infringement. Preliminary injunctions, available early in litigation, can be obtained when the plaintiff demonstrates a likelihood of success on the merits and the balance of hardships favors relief.

Whether you need to file a trademark infringement case or defend against one, choosing the right trademark law firm matters far more than choosing one close to home. Revision Legal’s trademark litigators handle infringement cases across the country. Call us at 231-714-0100 or 855-473-8474 for a consultation.