Archive for 2016

Will a Preliminary Injunction Cost You Money in Your Trademark Infringement Lawsuit?

There is an interconnectedness between preliminary injunctions and monetary damages that is often glossed over. If you’re a trademark litigator, you should discuss the relationship between preliminary injunctive relief and monetary damages with your client before deciding to file a motion for preliminary injunction. Likewise, if you’re the trademark owner, you should also appreciate the…

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Where to Sue Trademark Infringers (Part 3): Venue

When filing a complaint for trademark infringement, the plaintiff should make sure that the court has jurisdiction to hear the case and the court is a proper venue for the lawsuit. More specifically, jurisdiction refers to a court’s legal authority to hear a case (i.e., the power to adjudicate the action) whereas venue refers to…

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Where to Sue Trademark Infringers (Part 1): General Jurisdiction

OK. You’ve got a trademark infringer who won’t play nice. The cease and desist letter (or letters) didn’t work. Attempts to resolve the dispute through calm, reasonable phone communications fared no better. You are resigned to the fact that you are either going to let the infringer get away with it or you are going…

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Getting Around the § 43(c)(6) Federal Registration Defense to State Claims for Dilution

Trademark lawyers wax eloquent about the significant benefits of federally registering a trademark with the U.S. Patent and Trademark Office. Federal courts do too. And one of the benefits touted is the federal registration defense to state dilution claims provided by Lanham Act § 43(c)(6), 15 U.S.C. § 1125(c)(6).  In fact, in its recently well-publicized…

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At the Lectern: My System for Oral Argument

This post is not trademark specific (gasp!). But if you’re a trademark litigator, you’ll eventually find yourself making an appellate oral argument. Even if you don’t find yourself on appeal, you’ll definitely be arguing motions before a district court. Having a useful system to aid you in oral argument can significantly improve your chances of…

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On the Hook: Personal Liability for Trademark Infringement

Sometimes you’re the windshield. Sometimes you’re the bug. -Mark Knopfler, Dire Straits Great quote and apropos ahead of this week’s road trip down to Southern California. There are, of course, several mutations of that quote. Sometimes you’re the hammer. Sometimes you’re the nail. Sometimes you’re the dog. Sometimes you’re the hydrant. Sometimes you’re the pigeon.…

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