Mandour & Associates‚ APC is a trademark litigation law firm. We handle trademark litigation and trademark infringement matters. We can also assist with trademark registration. If you would like a consultation with a trademark attorney, please contact us.
At times‚ despite even the best efforts on both sides to resolve a trademark infringement informally such as with a trademark cease and desist letter‚ the filing of a lawsuit becomes necessary. In these instances‚ we are aggressive trial attorneys and litigation lawyers.
Elements of a Trademark Infringement Case
In order for a plaintiff to bring a trademark infringement lawsuit, a complaint must be filed that pleads certain elements such as ownership of the trademark in question and trademark infringement that is likely to cause consumer confusion.
To prove ownership the plaintiff must show that it was using the trademark in commerce prior to the defendant. If the trademark is registered, this will provide presumptive rights on the dates shown in the trademark application. This evidence must also be supported by further evidence showing that the trademark is still being used in commerce. Such evidence typically consists of website records, dated invoices to clients, advertisements, and marketing material.
The plaintiff must show that the defendant is using a confusingly similar trademark in such a way that there is a likelihood of confusion with the consuming public. Generally, courts will consider many factors to determine a likelihood of confusion. These factors are set out on our trademark infringement page. However, usually the most important factors are the similarity of the trademarks and the similarity of the goods and services at issue. Apart from a comparison of the trademarks and goods and services, evidence of actual confusion is the most compelling evidence in a trademark infringement case.
Trademark Trial and Appeal Board Cases
If you would like to oppose a pending trademark application from registering, or petition to cancel a trademark that has already registered, this can be done with the Trademark Trial and Appeal Board. For more information, please see our trademark opposition and trademark cancellation pages.
The Trademark Litigation Process
The Complaint is Filed
The complaint will lay out the plaintiff’s claim to the trademark, as well as the defendant’s actions that are alleged to constitute trademark infringement. The complaint will also ask the court for relief, which can include monetary damages as well as an injunction to stop the continued infringement of the plaintiff’s trademark.
The plaintiff must serve the defendant with a copy of the summons and complaint. After service of the complaint, the defendant has 21 days to file a response such as an answer or motion to dismiss. At this point a defendant may also be able to attack the complaint on procedural grounds. Such grounds include arguments that the court lacks venue or jurisdiction over the case, or that the plaintiff’s complaint is defective in some way such as failing to properly state a claim. A motion to strike may also be available if for example the plaintiff is requesting a type of damages that are not available in the case.
If the defendant fails to file a response by the deadline, the plaintiff can seek a default judgment. A large number of cases do not make it past the complaint stage because the defendant simply fails to show up. Lex Machina reported that 85% of trademark awards were based on default judgements. Often before a default the defendant will contact plaintiff’s counsel to try to settle the case.
The Discovery Process
If the defendant files an answer to the complaint then discovery can begin. The discovery phase of a litigation matter can last several months and in many instances the facts produced can sway the case. In discovery, the parties can seek information from each other by issuing:
- Document requests;
- Requests for Admission; and
- Notices of Deposition.
During discovery, new information may come to light that may result in changes to the claims in the complaint or the affirmative defenses brought by the defendant. Very few cases make it through the discovery stage because by this point one party or the other has usually decided to try to settle the case.
After discovery is complete, plaintiff or defendant can file a motion for summary judgment. A motion for summary judgment argues that there are no remaining questions of material fact as to a certain issue in the case, or as to the entire case. If summary judgment is granted, it can end the entire case. If the judge does not grant these motions, the lawsuit will move into the trial stage.
About 4,000 trademark infringement lawsuits are filed each year but very few of them make it all the way to trial. If a case does go to trial the parties present their respective cases in court typically over a 4-5-day period. During this time the parties present evidence and witnesses to try to prove their case. Opposing counsel is given an opportunity to cross examine all witnesses including experts if they are presented. Ultimately the case is decided by a judge or jury.
At any stage during the lawsuit, the parties can engage in settlement talks and this is how the large majority of cases end.
Defending Against Infringement Claims
Defendants can raise a number of affirmative defenses that excuse use of a trademark that may otherwise be considered an infringement.
The fair use doctrine allows incidental use of trademarks in certain situations such as commentary, advertising comparisons, and parody.
When a plaintiff delays for an unreasonable period before acting on an alleged infringement, and it causes prejudice to the defendant, the trademark infringement claim could be limited or dismissed altogether.
If a plaintiff engages in dishonest or fraudulent behavior relating to a trademark infringement claim, a judge may decide that punishing the defendant is unwarranted.
Equitable Relief in Trademark Infringement Cases
Frequently in trademark litigation the plaintiff’s primary goal is to stop the infringement as soon as possible. An injunction is a court order that prevents the defendant from continuing a trademark infringement. If a plaintiff is experiencing a high level of damages as a result of the infringement, the plaintiff may seek a preliminary injunction at the outset of the case.
In order to obtain a preliminary injunction, the plaintiff must show:
- It is likely to succeed on the merits of the case
- It is likely to suffer irreparable harm if preliminary relief is not granted
- The balance of harms is in its favor, and
- An injunction is in the public interest.
If an injunction is granted, the defendant may be forced to cease its activities until a final decision is reached in the case.
Damages in Trademark Infringement Cases
Apart from an injunction, a plaintiff in a trademark infringement case may also seek a monetary award. Monetary awards in a trademark lawsuit may include:
- Plaintiff’s damages sustained as a result of the defendant’s infringing activity
- The defendant’s profits from using the trademark in question
- Plaintiff’s costs incurred through “corrective advertising” to restore the value of the trademark
- Reasonable royalties the defendant would have paid, had the trademark been licensed
- Costs of the trademark action, and
- Attorney’s fees in exceptional cases.
Mandour & Associates – Trademark Litigation Attorneys
If you are involved in a trademark infringement or trademark litigation matter‚ we of course highly recommend that you seek the advice of a trademark lawyer as soon as possible. For our complete litigation philosophy including a list of some trademark infringement cases that we have handled in the past‚ please see our intellectual property litigation page. If you are located outside southern California‚ we can assist you from our Los Angeles‚ Orange County and San Diego offices.
If you are interested in having us assist you with a trademark litigation matter‚ please contact us.