Tech Heads, Inc. v. Desktop Service Center, Inc.

Plaintiff, Tech Heads Inc., brought this action against
defendant, Desktop Service Center, Inc., seeking monetary
damages, injunctive, and declaratory relief regarding Desktop's use of
the service marks TECHEAD, TECH HEADS, and TECHHEADS (collectively, the
"Tech Heads marks"). Tech Heads alleged claims for trademark infringement
under the Lanham Act, 15 U.S.C. § 1051-1127 (First Claim for
Relief), service mark infringement under Oregon Revised Statute ("ORS")
647.095 and 647.105 and Oregon common law (Second Claim for Relief),
service mark dilution under ORS 647.107 and Oregon common law (Third
Claim for Relief), and unfair competition under Oregon common law (Fourth
Claim for Relief).

Tech Heads is an Oregon corporation with its principal place of
business in Lake Oswego, Oregon. It is in the business of providing,
among other things, computer-related services, including installation and
maintenance of computer hardware, consulting, and training. Since at
least August 1995, Tech Heads has advertised and performed its services
in Oregon and in interstate commerce under the service marks TECHEADS and
TECH HEADS. Since then, Tech Heads has continuously used the Tech Heads
marks in connection with these services in Oregon and in interstate
commerce.

Tech Heads has advertised its services in interstate commerce,
including on its Internet Web site at www.techeads.com, since at least
early 1996. It expended substantial time, effort, and money
advertising and promoting the Tech Heads marks in connection with its
services. As a result of these efforts, Tech Heads claimed that customers of such services in the
state of Oregon and elsewhere associate the marks with Tech Heads and
Tech Heads has therefore acquired valuable goodwill in connection with
its services offered under the Tech Heads marks.

Desktop is a Virginia corporation with its principal place of business
in Richmond, Virginia. It offers computer-related services including the
recruitment and training of individuals with computer operational and
consulting skills. Desktop had no physical presence in Oregon, was not
registered to conduct business in Oregon, and had no registered agents,
employees, or sales representatives in Oregon. It never received a
franchise inquiry from Oregon and never offered a franchise to any Oregon resident or corporation. Desktop asserts that over 95% of its business is in
Virginia, "with the remaining business in the neighboring states of
Maryland and North Carolina and the District of Columbia." Desktop conducted no business of any type at any time in the state of Oregon or further west than the western border of the state of Virginia.

Desktop used the term TECHEAD as a purported service mark in connection
with its services, which are identical or similar to Tech Heads'
services, and also has a class of consumers similar or identical to Tech
Heads' class of consumers. Desktop uses the term TECHEAD on its Internet
Web site, www.techead.com, and also owns the Internet domain name
"techead.net." On December 23, 1997, Desktop filed an application to
register the mark TECHEAD with the United States Patent and Service Mark
Office. On March 2, 1999, the mark was registered as U.S. Reg. No.
2,228,163.

Desktop moved to dismiss the Complaint for lack of personal
jurisdiction, asserting that it has had no continuous and systematic
contacts with Oregon and has not purposefully availed itself of the
opportunity to conduct business in Oregon. Tech Heads responds that
personal jurisdiction is proper under Oregon's long-arm statute, ORCP 4.

Motion to dismiss was denied by the Court stating that "exercising personal jurisdiction in
this case did not strictly comply with `traditional' notions of
jurisdiction." "Traditional" notions of jurisdiction, however, must
remain flexible in the context of a constantly changing society where
technological innovations have transformed the interactions that serve as
the basis for personal jurisdiction. See Burnham v. Superior Court,
495 U.S. 604, 630 (1990) (Brennan, J. concurring) (court must look to
"contemporary notions of due process" to determine whether personal
jurisdiction is proper). Lest personal jurisdiction in cases such as this
be mistaken for over-reaching, those conducting business over the
can protect themselves with (1) a disclaimer that they will not
sell products or provide services (or accept resumes from) outside a
certain geographic area; and (2) an interactive agreement that includes a
choice of venue clause to which a consumer or client must agree before
purchasing any products or receiving any services. See Stomp, 61 F. Supp.
2d at 1080-81. In utilizing such methods, a business may be able to limit
the jurisdictions in which it could be subject to suit. "But when a
merchant seeks the benefit of engaging in unlimited commerce over the
, it runs the risk of being subject to the process of the courts
of those states."

Unknown

Unknown

Due process requires that a defendant have certain minimum contacts
with the forum state such that the maintenance of the suit does not
offend "traditional notions of fair play and substantial justice."
World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 292 (1980);
International Shoe Co. v. State of Washington, 326 U.S. 310, 316 (1945).
The nature and quality of the contacts with the forum state necessary to
support personal jurisdiction depends upon whether the plaintiff asserts general or specific personal jurisdiction over the
defendant.

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