Legislative framework and causes of action

The primary statutory framework for enforcing trademarks is set forth in federal law – namely, the Trademark Act 1946 (‘the Lanham Act’), codified at 15 USC § 1051 et seq. The Lanham Act provides for several causes of action for trademark owners, including:

  • Section 32 for infringement of a federally registered mark (15 USC § 1114);
  • Section 43(a) for false designation of origin for unregistered trademarks; and
  • Section 43(c) for dilution of famous marks (15 USC § 1125(c)).

State common law complements the federal statutory framework, providing causes of action for infringement, unfair competition and palming off. State consumer protection acts may also provide additional rights and remedies, such as awards of reasonable attorneys’ fees.

The core element of a trademark infringement claim is the unauthorised use of a trademark that is likely to cause confusion among relevant consumers. To be successful, a trademark owner must first establish that it owns a valid trademark. A federal registration provides the trademark owner with a presumption of such validity and ownership. Alternatively, a trademark owner can establish its ownership of a trademark through evidence of its common law use of the mark. To be valid, a trademark must be either inherently distinctive or have acquired distinctiveness in the marketplace.

Having proven that it owns a valid trademark, the trademark owner must then demonstrate that the defendant’s use of a designation in connection with its goods or services is likely to cause relevant consumers to be mistaken as to the source, sponsorship or approval of those goods or services, or the affiliation, connection or association of the defendant with another person.

The different federal court circuits in the United States employ similar lists of factors to help guide them in determining whether confusion is likely. These typically include the following factors, among others:

  • the strength of the plaintiff’s mark;
  • the degree of similarity between the plaintiff’s and defendant’s marks;
  • the similarity of the goods or services offered under the parties’ marks;
  • overlap in the parties’ channels of trade;
  • existence of any actual confusion in the marketplace;
  • the defendant’s intent in adopting its mark; and
  • the sophistication of the typical purchaser of the goods or services.

Not all of these factors need to be present to succeed. Depending on the circumstances, some factors may be given greater weight than others.

Alternative dispute resolution

While litigation is often regarded as the mainstay system for dispute resolution, there are various mechanisms in place to provide alternate avenues for trademark matters. Alternative dispute resolution (ADR) measures including mediation, binding arbitration or a unique blend of the two approaches may provide an expedited and more cost-effective path to an amicable resolution.

In addition to securing cost efficiencies, ADR provides a greater degree of flexibility in determining the time and location of hearings, customising rules on discovery, safeguarding confidentiality and selecting the neutral parties who will be hearing or mediating the dispute. None of these ADR methods can be employed without the consent of both parties, although in litigation courts may order the parties to engage in mediation. In addition to these ADR mechanisms, the Uniform Domain Name Dispute Resolution Policy is an alternate dispute resolution structure governed by the Internet Corporation for Assigned Names and Numbers for all generic top-level domains and certain country-code top-level domains.

In addition, Section 337 regarding unfair import investigations at the US International Trade Commission (ITC) encompasses trademark claims as well as patent claims. The ITC may be an appealing forum, given that it offers an expedited timeline, the availability of general exclusion orders and country-wide jurisdiction (with personal jurisdiction over all relevant parties).

Litigation venue and formats

While the majority of trademark disputes are raised in federal district courts under federal statutes, brand owners are not limited to adjudicating in federal court. Federal courts have original – but not exclusive – jurisdiction in trademark cases (28 USC § 1338(b)). Provided that other jurisdictional requirements are satisfied, trademark claims may be brought in either federal or state courts.

The lack of exclusive jurisdiction is unique among IP regimes and specific to trademarks (in patent and copyright cases, the federal courts have exclusive jurisdiction). However, in cases arising under the Lanham Act, the jurisdiction of federal and state courts is concurrent. As with federal courts, state courts may typically provide complete relief – both legal (damages) and equitable (injunctive) – and, if authorised, attorneys’ fees. Despite this, most trademark cases are litigated in federal courts, where the judges generally have more experience with trademark cases and can draw on ample case law interpreting the Lanham Act.

The defendant retains the ability to remove the proceeding to the federal courts, provided that a federal court would have had subject-matter jurisdiction over the case in the first place. Removal may be useful where the defendant’s litigation position is considerably enhanced by the opportunity to litigate in federal court (eg, to allay concerns of potential prejudice against an out-of-state defendant or by permitting a defendant to benefit from federal procedural rules such as those pertaining to expert testimony). Within the federal system, federal venue statutes determine which US district courts are proper venues. It is essential to confirm that the court has personal jurisdiction over the defendant and that such jurisdiction comports with the constitutional requirement of due process. Generally speaking, if the defendant is selling infringing goods or services in the forum state, it will be subject to personal jurisdiction. Even if a forum is proper and personal jurisdiction exists, a defendant may request a transfer of venue for convenience based on:

  • the location of evidence and witnesses;
  • whether a state has an interest in hearing the case; and
  • home forum choice.

In a situation where venue would be proper in more than one district court, a plaintiff should consider the particular law of the circuits where those courts reside. There are a number of important trademark issues where the laws of the circuits differ. For example, there is a current circuit split on the question of whether wilfulness is required to obtain an award of the infringer’s profits: in some circuits (eg, the Second Circuit and the Ninth Circuit) wilfulness is required, while in others (eg, the Third Circuit and Fifth Circuit) wilfulness is one among other relevant factors in the determination. A plaintiff should consider both substantive and procedural factors in making its forum determination.

In either state or federal court, the decision will ultimately be rendered by a judge or jury. In particular, a jury trial can be sought if monetary damages are at issue. If remedy is purely equitable, no right to a jury trial exists. In addition, should both parties waive their right to a trial by jury, the case will be decided by a judge. However, if both damages and equitable relief (eg, an injunction) are sought, the issue becomes identifying whether a jury trial is proper.

Damages and remedies

Injunctive relief is typically the remedy of choice for the trademark owner because it is most important to stop the infringement. In addition to injunctive relief, a plaintiff can also seek a variety of monetary remedies and, in exceptional cases, reasonable attorneys’ fees.

If a plaintiff wants the infringement to stop as soon as possible, it will want to seek a preliminary injunction at the beginning of the case to bar the infringing conduct pending trial. To obtain a preliminary injunction, the plaintiff must show that:

  • it is likely to succeed on the merits of the claim;
  • it is likely to suffer irreparable harm if the injunction is not granted;
  • the balance of hardships is in favour of the plaintiff; and
  • injunctive relief is in the public interest.

Historically, if a plaintiff showed it was likely to succeed on its trademark infringement claim, courts would presume that there was irreparable harm based on the notion that trademarks represent the intangible goodwill of the plaintiff. If there is a likelihood of confusion, the plaintiff will have lost control of the source-identifying function of the brand. The resulting damage is irreparable in that it is both serious and cannot easily be quantified.

However, courts have recently rejected this presumption. Following the Supreme Court’s lead in a patent case, all circuit courts which have addressed the issue have concluded that in order to obtain a preliminary injunction in a trademark case, a plaintiff must now provide sufficient evidence that it is likely to suffer irreparable harm without an injunction.

Those seeking injunctive relief should be primed to present evidence to support a claim that irreparable harm will likely be suffered. For example, such evidence may include:

  • the plaintiff’s reputation and goodwill;
  • the nature of the damage that is likely being caused to the plaintiff’s reputation or goodwill;
  • the consequences of any actual confusion among consumers;
  • infringing use of the mark on goods which do not match the plaintiff’s quality standards or are subpar; and
  • negative publicity or negative associations for the product on which the defendant is using the plaintiff’s mark.

In terms of monetary recovery, the Lanham Act provides that a plaintiff may be entitled to recover actual damages, the defendant’s profits and the cost of bringing an action (15 USC § 1117(a) (2006)). The court may increase or decrease monetary awards according to the circumstances of the case (but not exceeding three times the actual damages). With regard to dilution, monetary damages cannot be claimed without evidence that the violation was wilful.

All monetary remedies are subject to principles of equity (15 USC § 1117(a)). Courts are therefore given substantial deference to award money to prevailing plaintiffs, although all such remedies shall be considered compensation and not a penalty. The Lanham Act does not provide for punitive damages, although these may be recovered under some state law unfair competition statutes.

A plaintiff must show proximate injury caused by the infringement to demonstrate that it is entitled to monetary damages. For actual damages, the plaintiff must provide evidence such that damages are calculable to a ‘reasonable certainty’ to prevent that award from being unduly abstract. In large part, the plaintiff must demonstrate actual consumer confusion and any profits lost by virtue of the infringing use. For the recovery of lost profit damages, a plaintiff must quantify the profits that it would have earned but for the infringement.

If the court allows an award of the defendant’s profits, the plaintiff need only to prove the gross revenue that the defendant earned from the infringement. The burden then shifts to the defendant to prove the amount of revenue, if any, not properly attributed to the infringement and to prove its deductible expenses. In exceptional cases (eg, evidence of bad faith or fraud), a court may elect to grant reasonable attorneys’ fees to the successful party.

While regimes for relief vary in the common law and state systems, largely they take the same tack as the Lanham Act regarding both injunctive and monetary recovery, in that both are typically available.

Evidencing the case

In filing a claim of infringement, the parties must assemble the evidence used to support the claims.

The review of the complaint and gathering of evidence should be conducted with an awareness of potentially dispositive issues and elements that are largely more ancillary.

Interviewing witnesses

Interviewing witnesses with a direct knowledge of the facts of the case is mission critical to the success of the litigation. Thorough dialogues with witnesses are imperative to securing a complete understanding of the case particulars and avoiding partial truths and presumptions.

It is essential to mine the witness’s recollections to detect any inconsistencies or potential pitfalls in advance. In addition, persistence with regard to facts, timeframes, dates and details will be a useful barometer as to how the witnesses withstand examination from the other side.

Determining documents

Identifying documents that are fundamental to the case and that corroborate a witness’s accounts is vital to securing a favourable outcome. Of equal – if not greater – importance is the detection of any documents that may be detrimental to the case. It is of the utmost importance to flush these materials out as early as possible to strategically craft the narrative of the case and helm the ship around any bad documents that may undermine the credibility of a witness or the strength of the case.

Further, the parties are obliged to undertake reasonable efforts to prevent the destruction of any such relevant documents pre-emptively.

Conducting surveys

Consumer perception is at the core of many important trademark issues, including secondary meaning, genericness and likelihood of confusion. US courts generally accept survey evidence, provided that the surveys are relevant and meet appropriate methodological standards. Federal courts are guided by the Reference Manual on Scientific Evidence published by the Federal Judicial Centre and typically scrutinise surveys for compliance with these standards and will reject survey evidence that does not meet them.

Secure experts

Experts can also be valuable in strengthening the case. Expert testimony is nearly always used in the context of damages and other monetary remedies, but may also prove useful on other issues, including secondary meaning, genericness and likelihood of confusion. For example, linguists may offer relevant helpful testimony on issues concerning the meaning of words.

Non-traditional discovery

Non-traditional types of discovery frequently involve the most easily accessible data and are particularly relevant to trademark disputes. In particular, publicly available information may provide tremendous insight and evidentiary support regarding consumer recognition of the mark, meaning and usage (eg, data readily available via Archive.org’s Wayback Machine, Nexus searches, dictionary definitions and news archives).

Available defences

Numerous defences are available to refute a claim of trademark infringement, including the following (among others).

Ownership

The defendant may be able to assert that:

  • the plaintiff is not the valid owner of the mark at issue (eg, via a broken chain of title);
  • use of the mark has ceased with no intention to resume such use; or
  • the mark has not acquired secondary meaning or is generic.

Laches and acquiescence

Laches is an equitable defence to injunctive relief, as well as to monetary relief. Here, the defendant must establish that there was an unreasonable delay in asserting the plaintiff’s rights and the delay resulted in either economic or evidentiary prejudice.

Likewise, acquiescence stems from the plaintiff’s consent to the defendant’s conduct and then a delay in the challenge of that conduct. To prevail, the defendant would need to assert that it was given assurances by the plaintiff that it could use the mark, it relied on those assurances and it would experience undue prejudice if forced to cease use of the mark.

Unclean hands

The doctrine of unclean hands is a valid defence in a trademark infringement or unfair competition dispute and can result in a bar to some or all relief sought. To demonstrate unclean hands, the defendant must establish that the plaintiff acted inequitably or illegally (general misconduct is typically insufficient) with respect to the subject trademark.

Fair use

There are two types of fair use that a defendant may assert: statutory fair use and nominative fair use.

Statutory fair use is an affirmative and complete defence. A plaintiff may assert this defence if the use of words comprising a plaintiff’s trademark is non-trademark in nature and merely for purposes of describing the defendant’s goods or services, the source of the defendant’s goods or services or individuals involved with the defendant’s business.

Nominative fair use applies if the defendant makes referential use of the plaintiff’s mark to identify the plaintiff’s goods or services (not the defendant’s goods or services). Most courts consider nominative fair use not to be an affirmative defence per se, but rather as a different context within which to assess likelihood of confusion. For example, in the Ninth Circuit, if a defendant is making nominative fair use of the plaintiff’s mark, the court will assess whether there is a likelihood of confusion by considering the following factors:

  • Is the plaintiff’s mark necessary to describe the plaintiff’s goods or services?
  • Did the defendant use no more of the plaintiff’s mark than was necessary?
  • Did the defendant avoid doing anything to imply that the plaintiff is affiliated with or sponsored or endorsed by the defendant or its goods or services?

Appeals process

A trademark plaintiff has a right to appeal any final judgment in a trademark case. In addition, a trademark plaintiff has the right to appeal the denial of a motion for preliminary injunction (and a trademark defendant has the right to appeal the grant of such a motion). Other interlocutory or non-final decisions are generally not appealable without an order of the appeal court on motion. In general, appellate courts reviewing the decisions of the district courts will grant substantial deference to findings of fact, but will review de novo all conclusions of law.

Appeal decisions of the US courts of appeal are not appealable as a matter of right to the Supreme Court. To obtain such review, a party must file a petition for writ of certiorari to the Supreme Court. Such petitions are granted in relatively few cases.

This article first appeared in World Trademark Review. For further information please visit www.WorldTrademarkReview.com.

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Marc C Levy Partner marcl@seedip.com

Marc C Levy is a partner in Seed IP’s trademark and IP enforcement and litigation groups. He specialises in IP litigation and enforcement with an emphasis on trademark and unfair competition matters. He applies his extensive litigation and trial experience to helping his clients protect and enforce their brands by providing strategic brand management counselling. He brings more than 25 years of experience in IP litigation and trial work with a concentration in trademark, false advertising and unfair competition cases. He received his AB in philosophy from the University of California – Berkeley in 1986 and his JD, cum laude, from Harvard Law School in 1989.

Jennifer R Ashton Associate jennifera@seedip.com

Jennifer R Ashton is an associate in Seed IP’s trademark and IP enforcement and litigation groups. She counsels and assists clients with acquiring, maintaining and policing trademark, copyright and domain name rights. Throughout her career, she has managed US and international trademark portfolios for various clients ranging from start-up to Fortune 500 companies. She is experienced in all aspects of US and international trademark clearance, prosecution, enforcement and maintenance, including registering and maintaining trademark and copyright registrations. She earned her BA (with honours) in English literature from Columbia University in 2003 and her JD from Villanova University School of Law in 2006.

Russell C Pangborn Partner russp@seedip.com

Russell C Pangborn is a partner in Seed IP’s trademark and IP enforcement and litigation groups. He specialises in trademark and technology law, including strategic trademark and copyright counselling, internet policy, unfair competition, domain name strategy and disputes, trademark prosecution and maintenance, licensing, enforcement and litigation. He has been an IP attorney for over 20 years, with 14 years of in-house experience at global technology leaders Microsoft and Intel. He received his AB in psychology from Stanford University in 1989 and his JD from the University of California, Hastings College of the Law in 1994.