Month: December 2016

Going to Trial

If the issues regarding your trademark and another party could not be resolved during the pre-litigation period and if summary judgment was not appropriate, then you are likely going to trial. In order to prevail you must be prepared. Your witnesses should be thoroughly vetted to ensure they are knowledgeable and will act appropriately. Exhibits will also help further your case by providing a visual of important details. Attempts should be made to predict what sort of defenses the other side will use in order to be better prepared to respond. Cross-examinations can be useful but do not save major points or information for them. There are many things that should be argued and proved. Some of the most important are ownership of the trademark, validity of the trademark, secondary meaning, and likelihood of confusion. In proving these things there are many factors which can prove useful such as strength of the trademark, similarities between the trademarks, proximity in channels of trade or advertising, plans to bridge the gap or expand usage, good or bad faith, quality of goods or services, consumer sophistication, and actual confusion. There is a lot to consider as you go to trial. Make sure you, your counsel, and witness are all prepared.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Summary Judgment

If litigation regarding your trademark cannot be avoided, then it may be best to try and end the litigation quickly. One option that can help cut costs and time is summary judgment. Summary judgment is allowed when there are no genuine issues regarding material facts. A genuine material issue of fact an issue regarding a fact that would impact the result of litigation and is an issue of fact support by evidence. The benefit of reasonable doubt is given to whichever party is in opposition to summary judgment. It is not permissible for an issue of fact to be created in order to prevent summary judgment. Summary judgment may be allowed if a case is very complex and even if likelihood of confusion is one of the issues. Minor issues of fact may also prove ineffective at halting summary judgment. Summary of judgment will likely be granted where there is a completeness of record. This means that the facts are not contested, there was a thorough discovery period, and that a trial is not necessary for proper judgment. Summary judgment has also been used successfully where there were long delays by one party and cases regarding fair use. When used correctly, invoking summary judgment can help you save time and money when fighting trademark infringement.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Preliminary Injunctive Relief

If your trademark rights are being infringed then you may need to act quickly to avoid possible harm to your brand, business, and/or reputation. Infringement can have lasting negative consequences for your trademark and putting an end to infringement as quick as possible should be a main goal. Preliminary injunctions are a way to provide some measure of relief for infringement prior to and during a trial. While such injunctions are of course dependent on the end result of the trial, they often serve to predict the outcome or put it to rest early. A preliminary injunction may be granted if irreparable harm may occur before the trial, there is a chance of success for the plaintiff, the harm to the plaintiff outweighs the harm to the defendant, and if the process has been done quickly to stop infringement. Irreparable harm means harm which cannot be compensated monetarily, such as harm to a reputation or the quality that is associated with the trademark. Speed is important here, as it always is in trademark law. The sooner one asserts their rights to prevent harm from infringement the more likely they are to prevail.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Discovery

In order to plead or defend a claim for or against your trademark there will be a period of time before the trial known as discovery. Discovery is the process where both sides provide each other with the basis of their claims and relevant information. The goal of the process is to prevent any sort of surprise during the actual trial. This information is obtained several different ways. The first is initial disclosure which is where relevant information such as names and documents are disclosed early by both parties to accelerate the process. Interrogatories, or written questions, is way to obtain specific answers. In the same vein depositions, oral questions, can also be used to obtain direct answers from the other party. Depositions can be very useful, but they can also be disastrous if you or one of your witnesses are not prepared, have all the facts, or understand how important such testimony is. Requesting documents is another way information may be obtained during discovery. Documents can be requested both before and after the deposition. At all times during this process both parties have a duty to disclose complete and correct information. If you realize you made a mistake or discovered new information this should be corrected immediately.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Motions

Before and during pleadings regarding your trademark or application there are motions which can be used. Pretrial motions can be made that can terminate or expedite the process. Motions regarding jurisdiction, services, or venue can be made early on, but if not made the right to these motions are waived. Temporary Restraining Orders (TRO) or preliminary injunction can be requested if irreparable injury may occur. This can even be done without notice to the other party so long as efforts to give notice can be shown and reasons are given as to why such a notice should not be required. In certain cases, expedited discovery can be requested in order to obtain the facts as soon as possible. A motion to dismiss the claim can be requested if the complaint is inadequate. Motions can be made to strike certain immaterial or redundant matter, summary judgment, to transfer to another venue, to divide claims into separate trials, and to obtain an attorney’s option. Pleadings can also be amended through motions if there are new facts are made available during discovery. Motions of limine can be made which are motions to exclude evidence that was not included during discovery or was inconsistent with the evidence provided during discovery. Know all your options as you plead your case.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Answering a Complaint

If you have received a complaint or think you may, then there are many things you should know. Complaints are usually served by hand or first class mail. An answer to the complaint must be submitted within 20 days, although 30 day extensions may be granted if they are requested. There are three main ways a complaint can be responded to including admitting, denying, or alleging there was is no knowledge or information that would led them lead them to believe the allegation is true. Other affirmative defense that can be considered include laches, acquiescence, genericness, fair use, abandonment, estoppel, fraud, misuse, etc. When answering it is possible to also include a counterclaim. A counterclaim is generally compulsory in that they are related to the original claim and cannot be raised in later proceedings. Raising a counterclaim keeps open the possibility of things such as cancelling the opposing mark or being compensated for attorneys’ fees. Counterclaims can also be made for antitrust violations and for declaratory judgment of noninfringement. A complaint is just the beginning of the process, but starting out on the right foot can help protect your trademark rights.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Considerations Regarding Claims

No matter which side of a claim you are on there are many things which you should be aware of. After filing a claim, summons must be served within 120 days. A complaint must be answered within 20 days of being served, but extensions may be requested. As a claim proceeds the plaintiff has the right to choose the forum although this is limited to where the defendant resides, where the claim occurred, or where the defendant may be found. Other things to take into consideration include researching the judge and his past record, how strong your case is, time, money, venue, and what advantage you stand to gain if you were to obtain registration. The answers and information from these questions can help you decide if you want to request a jury or not. A jury may only be requested if the issues are legal ones. If the issues are only equitable ones, then there is no right to a jury. Whether or not the issue is legal or equitable depends on the sort of relief which is sought.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Jurisdiction in Trademark Law

Where you intend to bring your case is an important question that will shape your strategy as you proceed with a claim. To bring a claim in federal court subject jurisdiction is required under federal trademark laws. This can be established by showing the cause of action is created by federal trademark law and that relief depends on a question regarding federal trademark law. To establish federal jurisdiction there has to be a valid registered trademark, an intent-to-use trademark will not be enough. If accused of infringement one may seek declaratory judgment that the use is not infringement. Extraterritorial jurisdiction can be applied for citizens if there is an effect on US commerce and there is the possibility of conflict with trademark rights. Personal comes into play when someone who is not resident in the state where the claim is brought is accused of infringement. Be aware of where you will be bringing a court and where a case against you could be brought if you are accused of infringement.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Pleading a Claim

No matter what cause of action you intend to plead it is essential to provide more than just an accusation. Facts must be provided which establish an alleged plausible claim for relief. There are many forms of infringement that can be pleaded such as infringement of a federally registered mark, violation of the Lanham Act, false advertising, common-law infringement, unfair competition, dilution, misappropriation, and deceptive trade practices. It is important to note that even unregistered marks have certain rights. This can apply to trade dress including packages, design, and color. Likelihood of confusion and misrepresentation can com come into play for unregistered marks. Also remember that false advertising does not just apply to what you say about your own product, but also what you say about your competitor’s products. There are other causes of action as well such as violation of right of publicity or privacy, interference of business relations or prospective economic advantage, defamation, breach of contract, and disparagement. Many of these causes of action can, and usually do, overlap with each other. When pleading a claim be aware of all the facts and be sure of exactly what you are pleading and wish to obtain.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

 

Trademark Negotiations and Settlements

Before jumping into litigation many trademark owners decide to engage in negotiation efforts in hopes to reaching a settlement. Litigation can prove to be very long and costly. Many times the correct decision is to avoid it by attempting to work with the other party. No matter which party you are, it is important to establish who registered the trademark first and to conduct preliminary research to understand all the facts at play. Next a strategy should be devised. Threatening letters may prove useful, but they are not the only way to go about this. Sometimes courteous correspondence may be more effective at establishing a climate where both parties can work together. Possible settlement options include changing or phasing out a name after a set duration or when existing stock is sold or limiting use to specific items, markets, or regions. A monetary settlement or a license agreement are also options. Such settlements do not have to occur during prelitigation, but can always be kept open as an option during the other litigation stages. Alternative forms of dispute resolution such as mediation and arbitration are available to parties hoping to avoid litigation.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Misuse

Having a trademark confers valuable rights to its owner. While these rights may be used in an equitable manner to protect one’s trademark and business, if misused these rights may result in claims against the owner. Misuse can be use that violates other laws or things such as enforcing a trademark which was obtained through fraud. Misuse may also occur if licensee violates the agreements of a trademark license, such as by engaging in illegal discrimination. Trademark misuse can come into play when dealing with antitrust laws. Such violations require a direct link between the antitrust violation and the trademark to accomplish a violation such as restraint of trade or monopolization. A violation like this could be in the form of bad-faith trademark enforcement. A trademark grants you rights and it is your duty to not only maintain them, but to ensure that you exercise them properly and in a way that maintains equity for you and other trademark owners.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Trademark Fraud

In order to show fraud, the party asserting it should have all the facts in regard to where, when, how, etc. as they are the ones whom the burden falls on. They must show exactly what fact was being misrepresented and when this occurred. Fraud is when a false representation is made to the USPTO or information was willfully withheld, it was known that this was false, and that registration would not have been issued by the USPTO if it knew this information was false. It is important to note that false information is not necessarily fraudulent. If the false information was submitted due to negligence, a misunderstanding, or inadvertently then it is likely not fraudulent. To be fraud there needs to be an intent to deceive. Fraud can be found where the applicant knew or should have known. In addition, someone bringing a fraud case to the courts must have clean hands, meaning they have not also engaged in inequitable conduct. When completing your trademark application remember to check and double-check it for accuracy and truthfulness.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is a generic term?

A generic term is a name which is a term for the goods or services that it is being used for. To figure out if a term is generic it has to be determined whether a purchaser would understand the term to be a name for goods or service, or a name for the class the goods or services that it is used for. It is possible for a registered trademark to become generic. It is an argument that can be made at any time, not just prior to registration, although the burden will be on the party arguing that the registered mark is generic. To argue genericness it has to be shown that consumers no longer understand the term denotes a trademark and now believe it to refer to the goods rather than the source of the goods. Evidence that may be used can be dictionary definitions, manner of use, use by competition, customer surveys, or even use by other parties such as the media. As you use your trademark make sure it is clear to your customers that your trademark is identifying where your goods or services are coming from.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is Fair Use?

Fair use is a defense against trademark infringement. It is used when a third party uses a registered trademark to describe their own goods. If this is demonstrated, then it means the use did not constitute being used as a trademark and thus not infringement. This is determined by looking at how prominently the registered trademark was displayed by the competitor, whether this was done in good faith, and whether or not it was used as a description. Courts have been inconsistent in determine whether likelihood of confusion has an impact on fair use. The degree of possible confusion could be a factor. It is important to note that fair use is different from advertisements which compare goods. Advertising comparison will be judged using likelihood of confusion. Nominative use may be permissible so long as the trademark has to be used to identify the described goods or services, the use is as limited in scope as possible, and the use does not suggest an endorsement by the owner of the trademark. Always be mindful when using the mark of a competitor under fair use to ensure you are not infringing on their rights.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Abandonment and Indication of Origin

Nonuse is not the only reason a trademark can be abandoned, so is loss of significance as an indicator of origin. This can occur for a variety of reasons. One major reason can be uncontrolled licensing and a failure to maintain the quality of the goods. The owner has a duty to ensure the goods that use his trademark are consistent with the quality consumers expect from the mark, otherwise the consumer is being deceived. Another reason can be failure to take action against third party use and infringers. If the owner does not use their rights to stop such usage, then there is no way for a consumer to know where the goods are coming from. If goodwill is not transferred along with the trademark, then the assignment may be invalid and the trademark abandoned. Evidence of transferring goodwill, such as other assets, may be required to demonstrate this. Lastly, material changes to the goods which completely change the goods or make a product of inferior quality could lead to abandonment. To avoid abandonment, remember to not only use your mark, but use it in a way that it clearly indicates the source of your goods or services.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Abandonment

When a trademark no longer identifies the origin and quality of goods or services then it is abandoned. This means that the owner’s rights regarding the trademark are forfeited and someone else may now use the trademark. This does not mean that you should start using a trademark that you think will be abandoned. Good-faith pre-abandonment use is only permissible to establish priority if there was no knowledge. Abandonment occurs either when a trademark is not being used and there is no intent to use or when the trademark becomes a generic term for the goods or services it is used for. In either case this now means it is not acting as an identifier of origin or quality. If a trademark has not been used for three consecutive years, then the owner must demonstrate their intent to resume commercial use or else the mark will be abandoned. Evidence that can be used to demonstrate intent to resume commercial use includes marketing proposals or targeted use only to specific customers. It is important remember the mantra use it or lose. Your rights hinge on your use.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Estoppel and Trademarks

In trademark law estoppel is applicable as always. Estoppel prevents a party from changing their position to one that is not consistent with their prior position. The goal is to stop a party from reversing positions because things changed and they now want to provide benefit to themselves. Equitable estoppel can be applied to announcements and statements if it would harm or detriment another party through their lack of knowledge or reliance on. Judicial estoppel applies to positions taken during the legal process. This is generally at the discretion of the courts and can vary depending on the court. It is important to remember that statements made in briefs may the trademark owner or a retained attorney can be considered binding judicial admissions. Collateral estoppel is when an issue has been litigated previously by the parties and future claims are precluded. It is always important to be mindful of what you say and how you say it as it may impact you, your trademark, or the application process down the road.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Laches and acquiescence

Laches is when the owner of a register trademark exhibits an unreasonable delay in asserting their rights regarding their trademark and in doing so gave passive acquiescence (or consent) to another trademark that may been infringement. Acquiescence is when consent is actively granted by the owner of a trademark to another trademark owner or part that may have otherwise constituted infringement. The theory behind laches is that the vigilant and not those that delay exercising their rights should benefit as this aid several things such a dispute resolution, litigation when the information is fresh, and to provide certainty for parties attempting to make investments. In order to prove laches as a defense it must be shown that the trademark owner had knowledge of use and did not take action in an excusable amount of time. It must also be shown that the defendant relied on the trademark owner’s inaction and asserting these rights now would result in prejudice. It is very important for you as a trademark owner to be vigilant and quick when asserting your rights in order to protect against potential infringement.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is a parody?

A parody is when a registered trademark is imitated by another party on the grounds of humor. Even on this ground, if the mark is too similar and may cause likely of confusion then it could still be infringement. Parody is not the same as fair use as a parody defense is an argument against likelihood of confusion unlike fair use. Parody is balance between the public interest of allowing jokes and the rights of a rights of the owner of a registered trademark. The owner’s goodwill and investment must still be protected. It will be more difficult to defend a parody trademark that is used to competitively sell a product. A parody trademark used only for humor, entertainment, or criticism is more likely to be permissible. It is also important for a parody trademark to not cause dilution. If it tarnishes the reputation of the registered trademark, then dilution may be argued. Goodwill will also be looked at to see if the intent was to amuse the public or confuse potential customers.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Disputing Likelihood of Confusion

Showing that there is no likelihood of confusion for a trademark application cited with this issues is not easy, but not impossible. This is generally the first way to dispute likelihood of confusion, but there are other affirmative defenses which can be used. To show there is no confusion it is important to emphasize all the differences in the trademarks, goods, potential customers, and where the goods or services will be sold. Even minor differences should be used as many little differences can add up to a strong argument. This can mean things like color, text, packaging, nature of goods, advertising, quality, price, etc. Another thing that can be looked at is whether there are third parties using trademarks that may also be considered similar. If this is the case, then it may be possible to argue the public is aware of such similar marks and has the ability to distinguish between them. Based on this it may also be possible to show that the registered trademark is weak or has a significant meaning in the industry. It is of course best to avoid likelihood of confusion altogether by carefully searching and crafting your application prior to filing, but it is possible to obtain registration by showing there is no likelihood of confusion.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.