1. hobbies and interests
2. inventors and patents

Trademark litigation
US Business FOLIO
Pre-Litigation Considerations
Common Defenses to Trademark Infringement
1.Investigate facts supporting infringement and assess evidence
in order to comply with pre-filing requirements for federal and/
or state court.
1.Abandonment – failure to use a mark for three consecutive
years with intent to abandon the mark is prima facie evidence
of abandonment; failure to police and enforce a mark can also
lead to abandonment.
2.Trademark owner may bring lawsuit in federal or state court
for trade­mark infringement or unfair competition.
3.Trademark owner may file with the International Trade
Commission (ITC) to prevent the importation of infringing
goods.
a. ITC participates as a party and conducts its own discovery.
b. ITC decisions can be appealed to the U.S. Court of
Appeals for the Federal Circuit.
4.Failure of trademark owner to enforce its rights may reduce
the strength and value of the mark; trademark owner has
obligation to “police” its mark.
5.A party may oppose a pending trademark application on
grounds of confusing similarity or may seek to cancel an
existing registration in an inter partes proceeding before the
Trademark Trial and Appeal Board (“TTAB”).
a. TTAB proceedings do not address infringement.
b. TTAB proceedings are generally less expensive than federal
court proceedings.
c. Discovery is available.
d. Evidence in TTAB proceedings is presented by written submissions and/or by deposition transcripts.
e. TTAB decisions may be appealed to Federal Circuit or
District Court.
Incontestability
1.A federal trademark registration that has been in use for five
consecutive years may be eligible for “incontestable” status.
a. Incontestability is conclusive evidence that the mark is valid
and that its owner has exclusive rights to use the mark in
commerce.
b. An incontestable mark may nevertheless be cancelled on a
number of grounds, including that the mark is: functional,
abandoned, generic, obtained by fraud, or used to misrepresent the source of goods.
Infringement
1.Infringement occurs where the use of a similar mark on similar
goods and/or services is likely to cause confusion, mistake, or
deception as to the affiliation, origin, sponsorship, or approval
of goods and/or services.
a. In determining whether or not there is a likelihood of confusion, courts typically consider:
i. the similarity in the overall impression created by the two
marks (including the marks’ look, phonetic similarities, and
underlying meanings);
ii. the similarities of the goods and services involved (including an examination of the marketing channels for the
goods);
iii. the strength of the plaintiff’s mark;
iv. any evidence of actual confusion by consumers;
v. the intent of the defendant in adopting its mark;
vi. the physical proximity of the goods in the retail
marketplace;
vii.the degree of care likely to be exercised by the consumer;
and
viii.the likelihood of expansion of the product lines.
2.Fraud – trademark owner misled or withheld information from
the Trademark Office.
3.Laches – unreasonable delay before asserting or enforcing
rights against defendant.
4.Fair use – use of the mark that is descriptive or for
identification.
5.Prior use – defendant used the mark before plaintiff used or
registered its mark; for unregistered marks, this may be limited
to a particular geographic area.
6.Generic – the mark is for a term that the relevant purchasing
public understands primarily as the common or class name for
the goods or services.
Remedies
1.Injunction – typically awarded to prevailing plaintiff.
2.If liability is established, lost profits of plaintiff, profits of
defendant, a reasonable royalty or the cost of corrective
advertising, and attorneys’ fees.
a. A remedy of lost profits requires proof that defendant
would have made the sales but for infringement – typically
requires a market survey.
3.Courts may treble damages where infringement is willful;
trebling must be compensatory, not punitive.
Unfair Competition
1.State common law actions based on deceptive or wrongful
business practices.
2.Examples include: misappropriation, false advertising,
“bait and switch” sales, use of confidential information by
former employees to solicit customers, trade libel, and false
representation of products or services.
Dilution and Tarnishment
1.Action against use of a mark that is likely to dilute the
distinctive quality of a mark, or tarnish the reputation of the
mark.
2.Available only to owners of “famous” marks.
3.Defendant’s use of famous mark must be commercial and
subsequent to owner’s mark becoming famous.
4.Damages are available in dilution cases only where the
defendant willfully trades on the mark’s recognition or intends
to harm the mark’s reputation.
5.Defenses to dilution and tarnishment include:
a. Fair use.
b. News reporting.
c. Non-commercial use.
d. Ownership of a valid trademark registration.
Copyright litigation
Pre-Litigation Considerations
1.Investigate facts supporting infringement and assess evidence
in order to comply with pre-filing requirements for federal and/
or state court.
2.A work is entitled to copyright protection even without a
federal registration.
a. In order to file a lawsuit for infringement, a federal registration is required.
b. Post-infringement registration is permissible, but the type
and amount of damages available for pre-registration
infringement is limited.
Infringement
1.Copyright infringement is the unauthorized reproduction,
adaptation, distribution, performance or display of a
copyrighted work.
4.Fair use:
a. Statutory fair uses: use of a copyrighted work for criticism, comment, news reporting, teaching, scholarship, or
research.
b. Parody – reasonable taking of copyrighted material for use
as a parody may not infringe.
i. Parody used only for advertising is not a fair use.
c. Software - reverse engineering
i. Using a lawfully obtained copy of a computer program
may be a fair use.
d. Considerations for whether use is fair include:
i. Whether use is commercial or educational.
ii. Nature of the copyrighted work.
iii. Amount of the copyrighted work used.
iv. Effect on the potential market or value of the copyrighted
work.
2.Infringement requires proof of copying and improper
appropriation:
a. Copying is typically proved by indirect evidence of access
to the copyrighted work together with probative similarity of
the work.
b. Copying may also be proven with direct evidence (e.g.
eyewitness testimony).
c. Copying does not require intent - subconscious copying is
infringement.
d. Improper appropriation is typically proven by substantial
similarity of the protected material.
Remedies
3.Copyright protects the expression of ideas, but not the idea
itself.
a. Merger – if an idea is capable of only one, or a very limited number of expressions, it is not copyrightable.
4.Indirect profits may be recovered – e.g., increased concession
sales as a re­sult of infringing theatrical performance.
Indirect Infringement
1.A party may be liable for inducement or contributory
infringement where it has knowledge of the infringing activity
and induces, causes, or materially contributes to the infringing
activity of another.
2.A party may be liable for vicarious infringement where it
profits from direct infringement while declining to exercise a
right to stop or limit it.
Defenses
1.The work does not contain copyrightable material.
2.First sale – owner cannot control distribution after sale.
3.De minimis infringement – courts may excuse slight
infringements.
© 2012 Edwards Wildman Palmer LLP and Edwards Wildman Palmer UK LLP
ATTORNEY ADVERTISING. Prior results do not guarantee a similar outcome.
1.Injunction – may be granted where monetary damages are not
sufficient.
2.Actual damages suffered by copyright owner may be
recovered – typically in the form of lost profits.
3.Infringers’ profits may be recovered in addition to actual
damages – rationale is to discourage infringement.
a. No double recovery – lost profits cannot be recovered for
sales made by infringer in addition to the infringer’s profits
on the same sales.
5.Statutory damages – may be awarded as an alternative.
Generally, when actual damages are difficult to prove and
certain statutory prerequisites are met, the court assesses
damages between a statutory minimum and maximum without
proof of actual damages.
6.Attorneys’ fees may be awarded at the court’s discretion based
on the closeness, complexity, and novelty of the issues, and the
conduct of the parties.
Criminal Copyright Infringement
1.Some acts of copyright infringement carry criminal penalties,
including imprisonment. Criminal acts include:
a. Willful infringement for commercial advantage or private
financial gain.
b. Reproduction or distribution of phonorecords having a
value of more than $1,000.
c. Distribution of work prepared for commercial distribution
on a computer network accessible to the public.
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