Trademark Infringement

Trademark Infringement

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Expected Trademark Infringement Costs

Trademark litigation, like patent litigation, can be costly, although it generally does not add up as high as patent litigation.^[1]It is recognized that this is a generality and may change dependent on the damages model.    Generally, trademark costs depend on venue (TTAB versus state/federal) and aggressiveness of the parties.  The following table^[2]The figure is based on the numbers disclosed in “Typical Costs of Litigation,” Report of the Economic Survey 2011, American Intellectual Property Law Association, available for download at … Continue reading  walks a potential plaintiff through expected costs associated with trademark litigation.

The estimates of hours and total revenue are based on experience but can vary significantly.  For purposes of this table, a billing rate of $300-425 was used.  These estimates would be appropriate for a case of medium complexity that was actively contested by the other side^[3]Various surveys have quantified the average costs of trademark litigation. One older survey from the American Intellectual Property Law Association (AIPLA) in 1999 found that the median cost of … Continue reading .  Of course, these estimates are not intended to represent every type of trademark litigation, but represent just one possible flow of events and charges.

PHASE	TASKS	HOURS	BILLABLE RATE	CUMULATIVE EXPENSE
1	Intake phase	10 hours	$3,000-$4,250	$3,000-$4,250
2	Pleading phase	25 hours	$7,500-$10,500	$10,500-$15,500
3	Case management	50 hours	$15,000-$21,250	$25,000-$35,000
4	Fact Discovery	80 hours	$24,000-$34,000	$50,000-$70,000
5	Fact Review	100 hours	$30,000-$42,500	$80,000-$112,000
6	Expert Discovery	80 hours	$24,000-$34,000	$104,000-$145,000
7	Summary Judgment	150 hours	$45,000-$60,000	$150,000-$200,000
8	Pretrial Phase	50 hours	$15,000-$21,250	$165,000-$220,000
9	Trial	100 hours	$30,000-$42,500	$200,000-$260,000

Each of these tasks may include the following items:

• Intake phase: Review Complaint; review relevant TEAS records and other public evidence of use to evaluate trademark rights; conduct calls with clients to discuss litigation goals and key facts (priority dates, uses of marks in commerce); determine strategy for responding to Complaint.
• Pleading phase: Respond to Complaint by preparing Answer and potentially counterclaims; this may include time to seek and prepare a stipulation for extending 30 day window for response; this will require communications with client to establish key facts for denials, affirmative defenses, and counterclaims. This phase may include preparing a Motion to Dismiss, although that is less likely in trademark infringement cases given their factual nature. This phase may also include exploring settlement, including sending settlement proposals and attending ADR settlement conferences.
• Note that the pleading phase might involve responding to a preliminary injunction motion, the time for which was not included in the above table.
• Case management: Prepare litigation plan and proof chart; prepare for and attend Rule 26(f) conference (at least 21 days before CMC); serve initial disclosures (no later than 14 days after Rule 26(f) conference); prepare joint case management statement, including discovery plan; attend CMC.
• Fact Discovery: Prepare and serve discovery requests; respond to opposing party’s discovery requests; prepare for and take depositions; defend depositions; litigate motions to compel / protective orders, if necessary.
• Fact Review: review all discovery responses; prepare chronology of key documents and deposition testimony; begin outlining motion for summary judgment (“MSJ”); serve additional discovery to fill in gaps in factual record (e.g., follow up RFPs, RFAs); review responses to additional discovery.
• Expert Discovery: Research and retain expert witnesses (damages, consumer survey); prepare initial expert reports; prepare expert disclosures; review opposing party’s expert reports; review opposing expert disclosures (e.g., reading their publications and previous testimony); take opposing party expert deposition; prepare for and defend expert witness in deposition.
• Summary Judgment: finalize review of factual record and expert discovery; outline MSJ; draft MSJ; prepare expert witness declarations in support; prepare attorney declaration and attach exhibits of documentary evidence; review cross-MSJ and prepare opposition, including brief, expert declarations, and documentary evidence; review opposition to opening MSJ and prepare reply in support of MSJ, including expert declarations and documentary evidence; prepare for and attend MSJ hearing.
• Pretrial Phase: review MSJ orders; prepare witness lists; prepare exhibit lists; prepare motions in limine; prepare and conduct jury voir dire; prepare final pretrial conference statement; attend final pretrial conference.
• Trial: prepare trial plan; prepare opening statements; prepare witnesses for direct and cross-examination; prepare exhibits and demonstratives; conduct trial (multiple days).

How does a trademark infringement lawsuit begin? ^[4]Some of the material for this section is taken from the USPTO, “I’ve Been Sued,” available at https://www.uspto.gov/trademark/ive-been-sued. No copyright is claimed by the United States in … Continue reading

A trademark lawsuit begins when the trademark owner files a complaint with a court alleging trademark infringement. Among other things, the complaint names the parties involved and sets forth the allegations that form the basis of the lawsuit. Trademark owners who decide to sue may file their complaint in either state court or federal court, depending on the circumstances. However, in most cases, the trademark owner, as plaintiff, will choose federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case “removed” to federal court.

Frequently, either before or at the time a complaint is filed, the trademark owner or the owner’s U.S.-licensed attorney may send you a letter/email or otherwise contact you to make claims about the owner’s trademark rights and demand that you take certain actions, such as ceasing use of your mark.

What are my options to respond to the suit?

Your duty to respond to a complaint is triggered when the plaintiff formally “serves” the complaint on you, along with a “summons,” which is a court notice requiring you to appear before the court and respond to the complaint by a certain date. If you are sued, you must formally respond to the complaint, either by filing a document called an “answer” with the court, or by filing a motion based on one of the grounds set forth in Rule 12 of the Federal Rules of Civil Procedure, if any apply. You must file the answer or any applicable Rule 12 motion within the time period set by the court’s rules and serve a copy on the plaintiff. If you fail to timely file an appropriate response to the complaint, the court may enter a default judgment against you and order you to pay damages or perform other remedial actions.

These are only the first steps of a litigation process that can be very complicated. If you are sued for trademark infringement, a U.S.-licensed attorney experienced in trademark litigation can assist you in deciding the best course of action, which may include one or more of the following options:

• Challenging the claimed trademark;
• Denying that the trademark owner has proved infringement;
• Asserting a defense to the alleged infringement; and/or
• Negotiating a settlement of the lawsuit by, for example, agreeing to take certain actions to avoid likelihood of confusion.

When considering options, keep in mind that litigation is usually expensive and time-consuming, and it can take years before a court delivers a decision. And, even when a court reaches a decision, it may be appealed to higher courts, resulting in additional time and expense.

How do I find a lawyer?

The state bar association where you or your business is located and the various national bar associations have directories of U.S.-licensed attorneys. Look for an attorney who specializes in trademark litigation. For more information on local assistance, please visit the Resources webpage.

How do I know whether I’m infringing?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are “senior” to the defendant’s), and that the defendant’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.

Generally, the court will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are the degree of similarity between the marks at issue and whether the parties’ goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts typically consider include how and where the parties’ goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant’s intent in adopting its mark; and the strength of the plaintiff’s mark.

The particular factors considered in a likelihood-of-confusion determination, as well as the weighing of those factors, vary from case to case. And the amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit.

In addition to claiming likelihood of confusion, a trademark owner may claim trademark “dilution,” asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner’s mark by “blurring” the mark’s distinctiveness or “tarnishing” the mark’s image by connecting it to something distasteful or objectionable-even if there is no likelihood of confusion.

An experienced U.S.-licensed trademark attorney, taking the particular circumstances of your case into consideration, should be able to provide you with an opinion as to the validity and strength of a trademark owner’s claims.

How can I use USPTO records to find out more information about the claimed trademark and who owns it?

You can use the Trademark Electronic Search System (TESS) to search the USPTO’s database of applications and registrations. If you know the application serial number or registration number for the particular mark, you may use the Trademark Status and Document Retrieval (TSDR) system to view/download relevant application and registration records.

How can I challenge a trademark registration or application?

Several options exist to challenge another party’s trademark registration or application, depending on the particular circumstances and grounds for challenging:

• You may challenge a trademark registration issued by the USPTO by filing a petition to cancel the registration with the Trademark Trial & Appeal Board (TTAB).
• You may challenge an application for trademark registration at the USPTO by filing an opposition with the TTAB within 30 days after it is published in the Official Gazette.
• You may file a declaratory judgment lawsuit, asking a court to declare that your mark does not infringe the trademark owner’s mark, and/or that the trademark owner’s mark is invalid.
• If you are already a defendant in an infringement lawsuit, you may assert an “affirmative defense” and/or a counterclaim against the plaintiff challenging the validity of the plaintiff’s trademark.