IP Law Daily, TRADEMARK—D. Or.: Columbia University trustees’ dismissal and transfer bid denied in ‘COLUMBIA’ trademark suit, (May 6, 2026)

By Ravindra Kumar Singh, B.L.

Online sales of allegedly infringing “COLUMBIA”-branded merchandise into Oregon established purposeful direction and justified retaining the plaintiffs’ chosen forum.

A federal district court in Oregon denied Trustees of Columbia University in the City of New York’s motion to dismiss for lack of personal jurisdiction in a trademark and contract infringement suit brought by Columbia Sportswear Company and its affiliated entities, finding that it could properly exercise specific personal jurisdiction over the defendant. The court held that the defendant’s online sales of allegedly infringing “COLUMBIA”-branded merchandise into Oregon constituted purposeful direction toward the forum, that the plaintiffs’ claims arose out of those forum-related activities, and that exercising jurisdiction was reasonable. The court also denied the defendant’s alternative request to transfer the case to the Southern District of New York, concluding that the defendant failed to make a strong showing of inconvenience sufficient to disturb the plaintiffs’ choice of forum (Columbia Sportswear Co. v. Trustees Of Columbia University In The City Of New York, No. 3:25-cv-01299-AB (D. Or. May 1, 2026)).

Background. Columbia Sportswear Company and its affiliated entities operate as Oregon-based manufacturers and retailers of outdoor apparel and accessories, with their principal places of business in Oregon. Trustees of Columbia University in the City of New York is a private educational institution headquartered in New York that sells university-branded merchandise, including apparel, through physical and online retail channels.

The plaintiffs asserted rights in the registered word mark “COLUMBIA,” including U.S. Registration No. 2,047,397, covering use of the mark on various goods. The mark constitutes a dominant element of the plaintiffs’ branding and is prominently used in connection with their apparel, retail stores, and advertising.

The dispute arose from a series of coexistence agreements between the parties spanning more than two decades. Most recently, a 2023 agreement permitted the defendant to use the “COLUMBIA” mark on apparel and accessories, subject to the condition that such use be accompanied by additional university indicia. The plaintiffs alleged that, beginning in 2024, the defendant breached this agreement by selling merchandise bearing the standalone “COLUMBIA” mark without the required indicia through its online store. The plaintiffs further alleged that the defendant continued such sales despite notice and requests to cure.

On this basis, the plaintiffs filed suit asserting claims for breach of contract, breach of the implied covenant of good faith and fair dealing, trademark infringement under the Lanham Act, false designation of origin, and related state law claims. The defendant moved to dismiss the complaint for lack of personal jurisdiction under Rule 12(b)(2), or, alternatively, to transfer the case to the Southern District of New York under 28 U.S.C. § 1404(a).

Purposeful direction through online commerce. Applying the Ninth Circuit’s three-prong test for specific personal jurisdiction set out in Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797 (9th Cir. 2004), the court focused on whether the defendant purposefully directed its activities toward Oregon.

Relying on the “effects test” from Calder v. Jones, 465 U.S. 783 (1984), the court held that the plaintiffs sufficiently alleged intentional conduct expressly aimed at the forum. The defendant sold allegedly infringing merchandise through an interactive website and caused those goods to be delivered to Oregon residents as part of its regular course of business.

The court rejected the defendant’s argument that such sales were de minimis or isolated and emphasized that the number of sales is not determinative; rather, the inquiry turns on whether the sales occurred in the ordinary course of business. At the pleading stage, the court also resolved factual disputes in favor of the plaintiffs.

Claims arising from forum-related activities. On the second prong, the court held that the plaintiffs’ trademark claims arose directly from the defendant’s sales of allegedly infringing merchandise into Oregon. Citing Bristol-Myers Squibb Co. v. Superior Ct. of California, S.F. Cnty., 582 U.S. 255, 262 (2017), the court found a sufficient nexus between the forum and the underlying controversy. The court further exercised pendent personal jurisdiction over the contract claims because they arose from the same nucleus of operative facts as the trademark claims.

Exercise of jurisdiction found reasonable. On the third prong, the court held that the defendant failed to present a compelling case that exercising jurisdiction in Oregon would be unreasonable. Applying the factors set out in Freestream Aircraft (Bermuda) Ltd. v. Aero L. Grp., 905 F.3d 597 (9th Cir. 2018), the court found no basis to conclude that litigating in Oregon would offend traditional notions of fair play and substantial justice. The court also rejected the defendant’s contention that jurisdiction had been artificially manufactured through isolated transactions, finding such arguments speculative and insufficient to defeat the plaintiffs’ prima facie showing.

Transfer of venue. Turning to the alternative motion, the court applied the § 1404(a) framework articulated in Stewart Organization, Inc. v. Ricoh Corp., 487 U.S. 22 (1988).

The court accorded substantial weight to the plaintiffs’ choice of forum and held that the defendant failed to make the strong showing of inconvenience required to disturb that choice. It observed that transfer would merely shift inconvenience from the defendant to the plaintiffs, contrary to Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834 (9th Cir. 1986).

Other factors, including the convenience of witnesses, the location of records, and applicable law, were neutral. The court noted that modern technology reduces the burden of transporting documents, citing Adidas America, Inc. v. Cougar Sport, Inc., 169 F. Supp. 3d 1079 (D. Or. 2016), and that Oregon had a legitimate interest in protecting resident corporate plaintiffs from alleged trademark violations.

Accordingly, the court denied the defendant’s motion in its entirety and allowed the case to proceed in the District of Oregon.

The Case is No. 3:25-cv-01299-AB.

Judge: Baggio, A.

Attorneys: Jason P. Evans (Schwabe, Williamson & Wyatt, P.C.) for Columbia Sportswear Co. Andrea R. Meyer (Sussman Shank, LLP) for Trustees of Columbia University In the City of New York.

Companies: Columbia Sportswear Co.

Cases: Trademark OregonNews