I. TRADEMARK LITIGATION

Whether offensively enforcing or defending a trademark infringement matter, we have the experience to represent you or your company in either the federal or state courts of California, and may appear "pro hac vice" in other states.  There are several issues involved in intellectual property infringement litigation.  First, we will assess your situation and determine which claims are at issue, such as trademark, copyright, or patent infringement, tradedress, misappropriation of trade secrets, unfair competition, antitrust, cybersquatting, dilution,  breach of contract, rights of publicity, or other related causes.  

Procedurally, we must decide whether or not the jurisdiction, venue, and other procedural considerations are appropriate.  However, prior to litigation, we strive to resolve your matter by either sending or responding "cease and desist" letters, or by creative settlement negotiations.  Further, we are well versed in rendering trademark opinion letters, either prior to applying for a mark, or prior to litigation.

If we determine that litigation is the right strategy for your matter, below is a brief outline of what may happen:

• Plaintiff files a Complaint for trademark infringement (or other claims as referenced above) in federal or state
• Plaintiff may alternatively file a Motion for Preliminary Injuction, or Temporary Restraining Order ("TRO") to immediately stop the defendant from using or infringing on the trademark at issue.  A separate hearing is required, and a Judge may grant or deny the Plaintiff's motion.  Or the Plaintiff may request expedited discovery. 
• Defendant must file its answer to Plaintiff's Complaint within 20 days (this may vary in different state courts) 
• The Judge issues a scheduling order and sets a trial date, and the case enters the discovery stage. 
• During discovery, both sides may serve papers such as Interrogatories, Request for Documents, Request for Admission, or conduct depositions, in order to obtain information and facts to support their case for trial. 
• Either side may consider to move and file for a Summary Judgment Motion if they believe no material facts are in dispute and that they are entitled to judgment as a matter of law.  If the Judge grants the moving party's Summary Judgement Motion, then it may dispose of the entire case or a particular issue and therefore trial will not be necessary.
• If Summary Judgment has not resolved the case, or the parties have not reached a settlement, the case will go to trial.
• Depending on the outcome of the case and timing, a party may be entitle to appeal the case after trial.

Our firm is well versed in the complexities and changes in trademark law, and when necessary, we associate with of counsel to handle larger litigation matters.  It is very difficult to assess the cost involved in litigating a trademark matter.  However, it should be noted that most trademark matters are settled before trial.

II.  COMMON INFRINGEMENT EXAMPLE

You are ready to launch a new product, or you are about to start a new business and you have a great name you’ve been wanting to use for years. But can you? Here is a typical scenario: Company A opens its doors (a physical store and online) choosing a name without conducting a trademark search. Company A starts promoting its name by investing in advertisements (print and online such as Google adwords). Months go by and Company A is doing quite well financially, has invested a lot money in advertising and marketing, and its page ranking in Google went up considerable for its desired terms (after spending a ton of money to search engine optimization marketing firms). Then one day, Company A receives a cease and desist letter from Company B’s attorney similar to this:

Company B is the owner of United States Federal Trademark Registration No. XX and other trademark registrations pertaining to this mark. Company B uses this mark in the United States in conjunction with its goods and services. Company B legally owns the trademark upon which your online store, products, and advertisement are infringing.

Company B believes that you are intentionally trading on the goodwill of Company B by using a trademark that is confusingly similar to Company B’s Trademark and that your use of the Trademark does, or is intended to confuse or mislead customers seeking Company B’s products or services. This activity is actionable under federal law and causes you to be liable to Company B in every state in which you have made sales or done business. Your activities are unlawful and constitute unfair competition, intentional trademark infringement and dilution, false designation of origin and/or cybersquatting.

Federal Law provides numerous legal remedies for trademark infringement and dilution, including, but not limited to, preliminary and permanent injunctive relief, monetary damages, claim to a defendant’s profits…

So now what? You are thinking it can only be a bad dream, I can’t stop using the name I’ve been using all this time. Think again. Although you may be able to fight or settle in order to prevent your name from being taken away, it typically takes time and a lot of money. This is the sad scenario many business owners face when the neglect to take into account intellectual property rights of others.

Rather than being a victim to bad business practices, the proper way to proceed is to obtain a trademark search on each and every name you intend to use in connection with the goods and services your business is promoting. A competent trademark attorney can conduct the search and analyze the results to advise you whether or not you should use the name. If the name appears to be clear, then it is advisable to proceed with your own application for a trademark in order to serve as a defense and to be used offensively against would be trademark infringers.

Upon issuance of your federally registered trademark, you have the following significant benefits:

• Nationwide constructive notice of trademark ownership

• Evidence of and a presumption of ownership

• Federal court jurisdiction (should you have to sue to prevent infringement)

• Federal registration can be used to obtain foreign registration

• The registration may also be filed with U.S. Customs Service to prevent importation of foreign goods that infringe on the trademark

9025 Wilshire Boulevard, Suite 301, Beverly Hills, CA 90211 Phone: 310.288.4500 | Fax: 310.246.9980 | Website: www.trademarkattorneyip.com, www.patentlawip.com

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