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

Infringement Lawsuit

A man staring at a question mark and the words "Types of Confusion: confused about confusion?"

Trademark infringement requires a likelihood of confusion. But what kind of confusion is required? Turns out, confusion has come a long way since 1962.

In 1962, 15 U.S.C. § 1052 was amended to delete the word "purchasers" from the phrase "likely to cause confusion, or to cause mistake, or to deceive purchasers." In addition, 15 U.S.C. § 1114 was amended to delete the phrase "as to the source of origin." These changes broadened actionable confusion to the use of any trademarks that were likely to cause confusion, mistake, or deception of any kind, not just confusion of purchasers or confusion as to source of origin. Since then, federal courts have recognized various types of actionable confusion. continue reading→

Preliminary Injunctions in Trademark Cases - time versus money

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 tie-in between preliminary injunctive relief and monetary damages to ward off inflated expectations of monetary awards later in the lawsuit. continue reading→

Picture of a basketball court behind home. Sue in your home court.

This is the fourth and final part in Where to Sue Trademark Infringers series. We've considered general jurisdiction, specific jurisdiction, and venue. Now that we've gone over the governing rules of law, the last question to answer is, where do I file the complaint for trademark infringement?

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Picture of a venue with text that reads Venue: picking a judicial district. Trademark Well.

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 where jurisdiction should or may be exercised (i.e., the location where the lawsuit should take place). continue reading→

Image of a Target on the State of California

In the last blog post, we concluded that, under the principles of general jurisdiction, a trademark owner can sue an infringer where the infringer is essentially at home in the forum state. For a company, this means the state in which the company was formed or the state in which the company has its principal place of business. For an individual, this means the state in which the individual resides. But what if the trademark owner isn't located in the same state that has general jurisdiction over the trademark infringer? Then it's time to examine whether specific jurisdiction exists in the state in which the trademark owner is located (which is presumably where the trademark owner would like to file suit). continue reading→