Some Information On U.S. Trademark Litigation
By Justin M. Jacobson, Esq. and Jeffrey E. Jacobson, Esq.
In cases where someone believes that their exclusive ownership rights in a validly registered trademark are violated by another, this individual or company has a variety of options, including potentially instituting a claim or lawsuit against them and engage in trademark litigation. In these situations, the trademark registrant might proceed against the infringer in a variety of ways, including sending appropriate notice letters or even filing documentation to initiate a formal legal proceeding in a number of potential forums.
Generally, when a trademark owner first believes that their rights in a particular mark are violated, it is prudent to send a formal letter to the infringer commonly referred to as a “cease and desist” (C&D) letter. This letter directs the other party to cease from any further infringement of the mark and it might also demand other remuneration as well as contain other formal requests. The mailing of a C&D letter could be beneficial in subsequent trademark litigation as it provides the alleged infringing party with notice of their potential violation of the owner’s rights in a mark. In fact, this correspondence could later be introduced during a formal legal proceeding as evidence of notice of a violation. In some instances, if a party receives a formal notice and disregards it by continuing with their infringing practices, it might enable the mark owner to proceed against the other party on a “willful” infringement basis in addition to any other appropriate legal causes of actions.
After a C&D letter is sent to an infringing party, the initiating party has a few unique options as to how to proceed and prosecute a claim. For instance, if a pending trademark application infringes or otherwise damages an existing party’s trademark registration, the damaged party can file an Opposition Proceeding with the Trademark Trial and Appeals Board (T.T.A.B.) to oppose the pending application on the basis that the application infringes or otherwise damages the owner’s trademark. Alternatively, in situations where an existing registered trademark violates another’s rights, a party can initiate a Cancellation Proceeding with the T.T.A.B. in an attempt to cancel an existing infringing registered mark. Additionally, a damaged party might turn to other means, including exploring obtaining an injunction or other court ordered relief to prevent an existing infringement.
In lieu of the above options, a damaged party could also initiate a formal lawsuit in a state or federal court or even with the U.S. International Trade Commission. This is because an owner’s trademark rights are acquired through “common” law as well as achieved through state enacted legislation, which can be obtained through a formal state trademark registration process. Alternatively, a registrant can utilize the federal courts to prosecute a party that violates federal trademark laws, such as the Lanham Act.
As previously explored, there exists a selection of different causes of action that might provide a party with a basis to initiate a trademark infringement lawsuit. In order to commence a legal action, the damaged party, known as the plaintiff, must file a formal document known as a “complaint” with the relevant arbitrating body such as a state or federal court or with the T.T.A.B. The required content in a specific complaint varies based on the particular legal cause of action and relief sought. Some of the relevant causes of action might include a party infringing another based on a “likelihood of confusion” between a party’s trademark and another’s mark. This type of matter is generally resolved through analysis of the “Polaroid factors,” including examining whether there is any evidence of “actual consumer confusion” as well as focusing on the “sophistication” of the prospective consumers. In addition or in lieu of this cause of action, there might be a claim by a damaged party for “tarnishment” of an existing mark as well as potentially a claim for “dilution” of a famous mark by another’s unauthorized or otherwise damaging use.
Ultimately, the arbiter, whether a state or federal court or the T.T.A.B., determines whether another’s usage violates the other party’s trademark rights in a name. If a party is found to have violated any or all of the owner’s trademark rights, then the party who brought the valid claim might be entitled to recover their actual damages suffered as a result of the infringement. This recovery could be in addition to them potentially recovering their attorney’s fees, which are the amounts spent by the party pursuing the claim; and, in rare cases, they might also be entitled to statutory proscribed amounts called “statutory” damages for willful instances of infringement.
While each individual situation is different, it is important that a trademark owner is aware of their duty to police any infringements, which might include taking appropriate steps such as sending “cease and desist” letters and potentially filing an appropriate state or federal lawsuit or a T.T.A.B. proceeding. Since every occurrence is different, it is crucial that a competent attorney is consulted to ensure that all the proper avenues are taken and that all the potential available remedies for the damaged party are explored.
This article is not intended as legal advice, as an attorney specializing in the field should be consulted.
© 2022 The Jacobson Firm, P.C