INTERNATIONAL dilution case highlights personal jurisdiction issues

In International Truck & Engine Corp v Quintana (259 F Supp 2d 553), the US District Court for the Northern District of Texas has issued a decision that provides further guidance on the issue of personal jurisdiction in connection with trademark infringement and dilution.

International Truck & Engine, a leading bus and truck manufacturer that owns the mark INTERNATIONAL, brought a suit in the US District Court for the Northern District of Texas against Ellas Quintana and his company, International Bus and Coach, for trademark infringement and dilution. The complaint stemmed from Quintana's use of International Truck's INTERNATIONAL mark in his marketing material and on his goods.

Quintana, who resides in and operates his business from Oklahoma, filed a motion to dismiss the action for lack of personal jurisdiction and improper venue or, in the alternative, transfer of venue and a stay of the proceedings. Quintana contended that neither he, nor his company, had sufficient contact with the Northern District of Texas to be subject to a suit in that district.

The court rejected Quintana's arguments, pointing to evidence that he and his company had:

• participated in the bidding process for contracts in Texas;
  
  
• attended trade shows in the jurisdiction, where they had displayed International Truck's mark;
  
  
• distributed unsolicited marketing materials bearing the mark in the district;
  
  
• made sales in Texas of goods bearing the mark;
  
  
• engaged in telephone marketing within the district; and
  
  
• placed advertisements using the mark on a website accessible in Texas.

The court held that this evidence established that Quintana did have sufficient contact with the Northern District of Texas to allow the court to have jurisdiction over the trademark infringement action.

John D Lawley, Kilpatrick Stockton LLP, Atlanta