Advice of Counsel Defense To Trademark Infringement

A recent case out of the southern district of New York,  Bath and Bodyworks Brand Management Inc v Summit Entertainment LLC,
discusses the affirmative defense of advice of counsel in a trademark
infringement lawsuit. Put simply, the advice of counsel defense is one in which
an alleged infringer relies upon advice it had previously sought from trademark
counsel in order to avoid a finding of willful infringement. Keep in mind
willful infringement carries with it enhanced statutory damages under the Lanham
Act. Therefore, in the event that the alleged infringer had retained a
trademark lawyer, secured a trademark availability assessment or trademark
clearance opinion, and relied upon the trademark attorney's opinion in making
use of a particular trademark, the advice of counsel defense may be applicable.

 However, using the advice of counsel defense requires that
the attorney-client privilege is waived to a certain extent. Thus, if the
trademark opinion letter identified risks and set forth recommendations
contrary to the actions taken by the alleged infringer, it may not be
worthwhile for the alleged infringer to assert the advice of counsel defense.
Moreover, there may be other reasons why waiving the attorney-client priveiige
may not be advantageous. Nonetheless the advice of counsel defense is one worth
considering in the event that the alleged infringer did indeed obtain a
trademark opinion letter prior to making use of the mark.

 Whether or not an advice of counsel defense is successful in
a trademark infringement lawsuit depends on the facts and circumstances of the
case. Regardless, this New York case and the concept of the advice of counsel defense simply reinforces the importance of securing a trademark availability
assessment or trademark clearance from a trademark attorney prior to making use
of a mark. If the trademark clearance revealed that such use would subject you
to claims of trademark infringement, then you would have the opportunity to
avoid such risks by choosing a different mark. Alternatively, if you were
advised that the use is permissible, only to be sued for trademark infringement
in the future, you could rely upon the trademark clearance and opinion letter
from trademark counsel as an affirmative defense to avoid a finding of willful
infringement and the statutory damages that go with it. As such, following the
typical steps of a trademark clearance prior to trademark registration of
trademark use is advantageous to you and your business. A trademark attorney
can guide you through these steps and advise you as needed.