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Litigation

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→

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→