Litigation

How I Used a Consent Agreement To Win a Trademark Infringement Lawsuit

In my last blog post, I discussed how the U.S. Patent and Trademark Office (“USPTO”) has been dealing with trademark consent agreements. This post views consent agreements from a different perspective, a litigant’s perspective. It’s important to differentiate between these two different contexts. Remember, a trademark consent agreement is just a private contract. And while…

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Trademark Disputes, Litigation Holds, and the Duty to Preserve

The legal principles relating to litigation holds are not trademark specific. But it is clear that the rules requiring a party and its counsel to implement a litigation hold apply equally to trademark infringement litigation. These are rules that a trademark owner and its trademark counsel—both trademark prosecution and trademark litigation counsel—should know. They should…

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What Does Advice of Counsel Get You in a Trademark Case?

Throwing your counsel under the bus to save yourself, which is also known as the advice of counsel defense. It gets a lot more play in patent infringement cases, but the defense is available in trademark infringement cases too. It’s just not invoked as often in trademark cases. Here’s what we’ve learned from when it…

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Likelihood of Confusion Tests by Circuit

Each of the 13 federal courts of appeal have their own test for evaluating whether a likelihood of confusion exists between two trademarks. Although the tests are not identical, most of them are substantially similar and use many of the same factors. And the factors are non-exclusive.  For ease of reference, I decided to identify the…

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