Introduction to Trademark Litigation
Initiating trademark litigation requires balancing considerations such as cost, the advantages of prevailing, and relevant time constraints. The purpose of trademark litigation is typically to prevent ongoing infringement, obtain sufficient compensation, and vindicate your trademark rights.
About Trademark Litigation
The services we provide here at TBillick Law PLLC often begin during the inception of the trademark; they include proactive guidance during the collection and prosecution phase to prevent or reduce the likelihood of litigation. When conflicts arise, it is usually due to compromised trademark rights or the accusation that rights may be compromised. Situations that get to this level require the input of a qualified trademark attorney.
Common Trademark Litigation Claims
- Trademark Infringement and Unfair Competition: This type of claim involves the unauthorized use of marks that are deceptively similar or identical to a trademark that is already registered. In other words, when a typical consumer views the mark, they will likely become confused regarding the service or product’s origin.
- Trademark Dilution: These claims result from unauthorized usage of famous trademarks that could impair or weaken their distinctiveness and credibility.
- Passing Off: This involves misrepresentation regarding a product or service’s origin. If someone misleads consumers into thinking that their merchandise or service is connected to a specific business when they actually are not, this can be grounds for litigation.
Factors Considered to Determine “Likelihood of Confusion”
Courts account for several fact-specific considerations to determine whether a likelihood of confusion exists. For example, federal courts in the Ninth Circuit Court of Appeals utilize the following factors:
(1) strength of the mark(s); (2) proximity or relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) the defendants’ intent; and (8) likelihood of expansion. Network Automation, Inc., v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011) (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979)).
This is obviously a very fact intensive inquiry. Trademark litigants often enlist trademark and survey experts to attempt to quantify the likelihood of confusion. And though they are not technically required in a case, they can provide credibility to your claim and will help convince the fact-finder (judge or jury).
Common Defenses to Trademark Litigation Claims
Common defenses used for trademark infringement, trademark dilution, or unfair competition include nominative fair use, descriptive fair use, First Amendment application, and laches. Descriptive fair use involves using descriptive terms to fairly describe services or products as opposed to using a trademark to indicate the source of the goods and/or services. Nominative fair use involves utilizing a protected trademark to describe or name the goods or services to which a mark is referencing. Examples may include newspaper references regarding sports teams and entertainment groups.
Laches are unreasonable delays on the part of trademark owners for commencing the lawsuit. Commonly known as “sleeping on their rights,” the laches defense claims that a plaintiff has intentionally delayed bringing an action for an extended period of time that results in the defendant party being prejudiced. Any improper conduct on the part of trademark owners may be used as a defense. There are also scenarios where First Amendment rights must be balanced in relation to trademark owner rights. This defense provides less protection for commercial speeches than would be the case with noncommercial speech.
Why Choose TBillick Law PLLC’s Trademark Litigation Services?
I represent both defendants and plaintiffs in trademark disputes and have years of experience with small and large trademark cases. I work with all types of trademark rights such as trade dress, service marks, telephone numbers, trade names, and product configurations and work closely with the U.S. Patent and Trademark Office as well as the Trademark Trial and Appeal Board.
Call (206) 494-0020 or send an email to set up a consultation. Let’s discuss your trademark litigation suit and determine if you need representation today.