Trademark Litigation
A company's trademarks can represent years of investment, reputation, and consumer goodwill. When another party uses a confusingly similar mark, sells counterfeit products, misappropriates a company's brand identity, or otherwise interferes with trademark rights, prompt and strategic action may be necessary.
Torani Law represents trademark owners seeking to enforce their rights as well as businesses and individuals defending against allegations of trademark infringement and related claims.
Our trademark litigation practice includes disputes involving federally registered and unregistered trademarks, counterfeiting, trade dress, dilution, unfair competition, cybersquatting, and related claims.
Trademark Infringement of Registered Marks
Federal registration provides trademark owners with significant rights and enforcement mechanisms under the Lanham Act.
Trademark infringement may occur when another party, without authorization, uses a reproduction, counterfeit, copy, or colorable imitation of a registered trademark in commerce in connection with goods or services in a manner that is likely to cause consumer confusion, mistake, or deception.
Trademark infringement disputes often involve competing business names, product names, logos, packaging, websites, advertising, social media, and other uses that may cause consumers to incorrectly believe that businesses, products, or services are affiliated, connected, sponsored, or approved by another party.
Whether infringement has occurred generally requires consideration of multiple factors including but not limited to the similarity of the marks in dispute, the similarity of the parties' goods or services, the marketplace, etc.
Trademark Infringement of Unregistered Marks
Federal trademark registration is not always required to enforce trademark rights.
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides a federal cause of action involving certain uses of words, terms, names, symbols, devices, or false designations of origin that are likely to cause confusion, mistake, or deception regarding the affiliation, connection, association, origin, sponsorship, or approval of goods, services, or commercial activities.
Businesses that have developed trademark rights through use may therefore have enforceable rights even when the mark has not been federally registered.
The existence and geographic scope of rights in an unregistered mark can depend heavily on the facts, including the nature and extent of the owner's use of the mark.
Trademark Counterfeiting
Trademark counterfeiting is a particularly serious form of trademark infringement.
Counterfeiting generally involves the unauthorized use of a counterfeit of a federally registered mark in connection with the goods or services covered by the registration. A counterfeit mark is generally one that is identical to, or substantially indistinguishable from, the protected mark.
Federal law provides significant remedies in qualifying counterfeiting cases. Depending on the circumstances, these may include injunctive relief, monetary recovery, statutory damages, and, in certain cases, procedures allowing seizure of counterfeit goods and related materials.
Counterfeiting disputes frequently arise in connection with e-commerce marketplaces, unauthorized online sellers, imported goods, social media advertising, and websites offering counterfeit merchandise.
Trade Dress Infringement
Trademark law can protect more than a company's name or logo.
Trade dress may protect the distinctive overall appearance or presentation of a product, packaging, or other source-identifying features when the applicable legal requirements are satisfied.
Trade dress disputes may involve product packaging, configurations, combinations of visual elements, and other characteristics that consumers associate with a particular source.
Protection generally depends on issues including distinctiveness, functionality, and likelihood of confusion.
Trademark Dilution
Federal trademark dilution law provides additional protection for qualifying famous marks.
Unlike traditional trademark infringement, a dilution claim does not require proof of actual or likely consumer confusion, competition between the parties, or actual economic injury. Federal dilution protection, however, is reserved for marks that satisfy the Lanham Act's demanding standard for fame—marks widely recognized by the general consuming public of the United States.
Federal law recognizes two principal forms of trademark dilution:
Dilution by Blurring
Dilution by blurring occurs when an association arising from the similarity between another mark or trade name and a famous mark impairs the distinctiveness of the famous mark.
The concern is that repeated use of similar marks by unrelated businesses may weaken the famous mark's unique association with its owner.
Courts may consider factors including the similarity between the marks, the distinctiveness and recognition of the famous mark, the extent of substantially exclusive use, whether the alleged diluter intended to create an association with the famous mark, and evidence of actual association.
Dilution by Tarnishment
Dilution by tarnishment occurs when an association arising from the similarity between a mark or trade name and a famous mark harms the reputation of the famous mark.
Dilution claims are subject to important statutory limitations and exclusions, including certain fair uses, parody, criticism, commentary, news reporting, and noncommercial uses.
Cybersquatting and Domain Name Disputes
Trademark disputes increasingly involve domain names and online conduct.
The Anti-Cybersquatting Consumer Protection Act provides remedies in certain circumstances when a party, with a bad-faith intent to profit, registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive trademark—or, in certain circumstances, dilutive of a famous mark.
Domain-name disputes can involve demands for transfer or cancellation of a domain name as well as claims for monetary relief where permitted by law.
Defending Against Trademark Infringement Claims
Not every allegation of trademark infringement is valid.
Torani Law represents businesses and individuals accused of trademark infringement, dilution, unfair competition, and related violations.
Defenses may involve challenges to the plaintiff's ownership or priority, the protectability or scope of the asserted mark, likelihood of confusion, fair use, abandonment, consent, and other factual or legal issues depending on the circumstances of the dispute.
Early evaluation can be particularly important when a business receives a cease-and-desist letter, demand to stop using its brand, marketplace complaint, or federal court complaint.
Preliminary Injunctions and Emergency Trademark Relief
Trademark disputes sometimes require immediate action.
Where allegedly infringing conduct threatens continuing harm, a trademark owner may seek a temporary restraining order or preliminary injunction before a case reaches final judgment. Conversely, a business facing an application for emergency injunctive relief may need to respond quickly to protect its ability to continue operating under its existing brand.
Torani Law represents clients in connection with requests for preliminary and permanent injunctive relief and other remedies available in trademark disputes.
Remedies in Trademark Litigation
Depending on the claims and circumstances, remedies available under federal trademark law may include:
- Preliminary and permanent injunctions
- Recovery of a defendant's profits
- Actual damages
- Costs of the action
- Statutory damages in qualifying counterfeiting or cybersquatting matters
- Enhanced monetary remedies in certain circumstances
- Attorneys' fees in exceptional cases
- Destruction or disposition of infringing materials
- Transfer or cancellation of domain names in qualifying cybersquatting cases
The remedies available in any particular case depend on the claims asserted, the evidence, and the applicable statutory requirements.
Strategic Trademark Enforcement and Defense
Trademark litigation is not simply about determining whether two marks look alike. These disputes can affect a company's ability to continue using its name, sell its products, operate its website, advertise, enter new markets, and preserve the goodwill it has developed in its brand.
Torani Law approaches trademark disputes with both the legal issues and the client's broader business objectives in mind.
Whether you are seeking to stop unauthorized use of your trademark or have been accused of infringing another party's rights, early strategic evaluation can help determine the appropriate course of action.