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

Litigation

Photo of man pushing rock uphill symbolizing uphill battle with common law trademarks

There a real advantages to federally registering your trademark. Unfortunately, those advantages are usually described in vague legal terms that may not mean much. The practical import is missing, and the benefit of federal registration cheapened. For example, one of the benefits of federal registration that gets touted is constructive nationwide use. So what? What does that even mean anyway? And why is it so great? Because if you don't have a federal trademark registration and you are relying only on your common law trademark rights, you are going to have to deal with a big freaking headache: proving market penetration in order to establish your common law trademark rights in a geographic area.

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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→

15 USC Section 1121(b)

Like many trademark practitioners, I cite Section 39(a) of the Lanham Act, aka 15 U.S.C. § 1121(a), routinely in jurisdictional statements. And every time I take a refresher and peek at the statutory section, Section (b) piques my interest. So what's the story on § 1121(b)? Turns out, it's a short story with little case law interpreting it. 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→

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→