the Trademark Resource for Start-Ups, Business Owners, Marketing Professionals, In-House Counsel, and Attorneys

Discovery

Picture of a server room with text "trademark counsel's 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 know these rules because they are easy to run afoul of and, in fact, most trademark owners and their counsel are not fully complying with litigation hold requirements. Litigation holds are not being implementing early enough (or, in some cases, at all), are not being implemented properly, and are not being monitored for compliance. continue reading→

Photo of dog and elephant sitting on the beach to illustrate the requirement of proportionality in trademark discovery

About a year ago—on December 1, 2015 to be exact, the 2015 amendments to the Federal Rules of Civil Procedure ("FRCP") took effect. One of the amendments that received a disproportionate amount of attention was the revision to the scope of discovery language of FRCP 26(b)(1) to emphasize that the scope must be proportional to the needs of the case. continue reading→

Personal Liability for Trademark Infrinement

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. Sometimes you're the statue. (Side note: still so hard to write or say statue instead of statute.) You get the idea, but I'll add one more to the mix. Sometimes you're the trademark bully. Sometimes you're the bullied. continue reading→

2Pic Converse RFAs

When I refer to converse requests for admission, I am referring to the practice of propounding a request for admission asking the other party to admit a fact and then propounding a request for admission asking the party to admit the negative of that fact. In other words, each request is the converse of the other. These types of requests for admission have also been referred to as mirror-image requests for admission or reverse requests for admission. continue reading→