Trademark infringement lawsuits are usually brought in federal court, but the law does not prohibit such cases from being adjudicated in state court.

Federal courts have original jurisdiction in trademark cases. 28 U.S. Code § 1338(b). However, federal courts do not have exclusive jurisdiction in federal courts. This was recently explained by a state district court in Virginia, which summarized the law nicely.

In both the demurrer and the pleas in bar, Defendants argue that these claims fall within the original jurisdiction of the federal courts, and therefore cannot be brought in a Virginia trial court. This argument is more properly categorized as a plea in bar and will be treated as such below.

Concurrent jurisdiction in state and federal courts over claims arising from federal law is presumed. The presumption applies even if afederal statute explicitly provides for original federal jurisdiction, so long as that statute does not also provide that jurisdiction is exclusive in the federal courts. See 17A-120 Moore’s Federal Practice-Civil § 120.12. Exclusive federal jurisdiction is established either through an express statutory statement or by a federal court ruling that federal court jurisdiction is exclusive. Id. Concurrent jurisdiction is the norm unless legislative history unambiguously indicates a Congressional intent for exclusive federal jurisdiction or the exercise of state court jurisdiction is incompatible with the federal interests. Gulf Offshore Co. v. Mobil Oil Corp., et al., 453 U.S. 473, 477-78.

In this case, 15 USC § 1121 provides that the district and territorial courts of the U.S. shall have original jurisdiction of any actions arising under the parts of the Lanham Act which fall within that chapter, including 15 USC § 1125(a), which Plaintiff is suing under. Although the code grants the federal courts original jurisdiction, it does not expressly state that exclusive jurisdiction rests with them.

In fact, 28 USC § 1338 states that the district courts shall have original jurisdiction of any civil action arising under any Act of Congress (i.e., the Lanham Act) relating to patents, plant variety protection, copyrights and trademarks. The statute continues, stating such jurisdiction is exclusive of the courts of the states in patent, plant variety protection and copyright cases. See 28 USC § 1338.Trademarks are not included in this list of matters subject to exclusive federal jurisdiction. The decision to not include trademarks in this exclusive jurisdiction appears to be an intentional affirmation of the concurrent jurisdiction of the state and federal courts over trademark matters such as those at issue in this case.

Virginia Courts do not appear to have directly addressed this question. However, the decisions of other State’s courts demonstrate the general principal that State courts have concurrent jurisdiction with federal courts over trademark and unfair competition actions brought under the Lanham Act. See Pioneer First Fed. Sav. & Loan Ass’n. v. Pioneer Nat’l Bank, 659 P.2d 481, 487 (Wash.1983); Flagship Real Estate Corp. v. Flagship Banks, Inc., 374 So.2d 1020, 1021 (Fla.Dist.Ct.App.1979). The New York cases cited by the Plaintiff are also particularly illustrative. See Dell Pub. Co. v. Stanley Publications, Inc., 172 N.E.2d 656, 660 (N.Y.1961); Brown & Bigelow v. Remembrance Adver. Prods., Inc., 110 N.Y.S.2d 441, 443-44 (N.Y.App.Div.1952).

Therefore, because the Virginia state courts have jurisdiction to hear Plaintiff’s claims arising 15 USC § 1125(a) Defendant’s plea in bar as to Counts VII and VIII is overruled. The Court’s order as to Counts VII and VIII is enclosed.

Buffalo Wing Factory, Inc. v. Mohd, 71 Va. Cir. 138 (2006).

Before your bring a trademark infringement case in state court, consider that defendants will usually ask the court to remove a state trademark infringement case to federal court. Thus, your case may encounter delays if it is brought in state court and then removed to federal court.

Selecting the proper court for any case is complex. It involves an analysis of the procedural requirements of the court system and preparation of your litigation strategy.