by Traverse Legal, reviewed by Enrico Schaefer - October 27, 2011 - Uncategorized
Welcome to Trademark Law Radio. My name is Enrico Schaefer. I’m a trademark litigation attorney specializing in internet law matters. Today, we’re going to be talking about some key tips for any client or prospective client who is looking at a trademark infringement issue and, specifically, looking at the possibility of trademark litigation. Look. Trademark litigation is serious business. The attorney’s fees and costs of a typical trademark litigation case really go well into the hundreds of thousands of dollars, if not, more. So, you need to know exactly what you’re doing before you step into court. So, here’s the way this usually works. You contact your trademark attorney. You let them know what the problem is.
The first thing that trademark attorney is going to do is assess the matter. They’re going to take a look at your trademark and do a complete history of your trademark registration. They’re going to take a look at your use and make sure all the information in your trademark registration is accurate in terms of dates of first use in commerce. The trademark attorney is going to determine whether the description of the trademark is accurate, whether or not the trademarked words match the specimen as well as its use in commerce that the client has been making through the ages. And then, they’re going to take a very good hard look at the person who’s alleged to have infringed the client’s trademark.
So that is a whole piece of the puzzle because you have to make sure that, in fact, you were first. You have to make sure that you’re not going to be moving backwards on your trademark rights if, in fact, you send a threat letter of infringement or whether or not you step into court ultimately in a trademark litigation situation. So, you have to get all the facts.
The one thing that clients need to understand is that a trademark attorney can give you advice as to what they think of your trademark issue, but trademark issues are inherently fact-intensive. That means that every case stands on its own. And while the prior case law will help you in litigation in terms of understanding what other courts have said, those are merely guideposts, and the judge in your litigation case, where you allege trademark infringement, could disagree with the prior court’s application of the law to the facts. So, because trademark infringement, trademark issues are always fact-specific, it makes it very difficult to predict the exact outcome.
Likelihood of confusion is always a really big issue. Will a consumer likely be confused as to the source and origin of goods and services? If the answer is yes, then you’ve crossed a very big hurdle in your trademark infringement claim against a third party. But the way that almost always gets resolved is at a jury trial, meaning that it is a fact-specific issue which is going to have to go to a jury. So, you need to fully understand how your trademark is assessed, how the infringement issue is assessed, and you need to understand the cost of litigation in any trademark infringement lawsuit before you go to court. You should probably be spending anywhere from $10,000-$20,000, at a minimum, getting your trademark assessed before even thinking about filing trademark litigation. Your attorney should take a really hard look at that. In many instances, our clients will spend between $40,000 and $80,000 getting everything lined up before stepping into court and making the allegation of trademark infringement. So, a good trademark attorney always gets the matter assessed and puts together a detailed strategy document before getting anywhere near the courtroom.
That’s all for today. This is Trademark Law Radio. Enrico Schaefer signing off. We will see you next time
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
