Trademark

ELO works with clients to handle trademark litigation, as well as cancellation and opposition proceedings before the USPTO’s Trademark Trial and Appeal Board (TTAB).

In trademark disputes, ELO prioritizes practical business needs while striving for the swift resolution of litigation, and when appropriate, through alternative dispute resolution mechanisms.

However, should a dispute escalate to civil action, understanding the legal framework is essential. Title 15 U.S.C. § 1117 governs damages in trademark infringement cases in the United States. Under this statute, if a violation of a registered trademark owner's rights is proven, the plaintiff is entitled to various remedies, which may include:

1. Recovery of defendant's profits;
2. Compensation for any damages sustained by the plaintiff; and
3. Reimbursement for the costs of the legal action – i.e. attorney fees.

The court is tasked with assessing these profits and damages or overseeing their assessment. Notably, in determining profits, the plaintiff only needs to demonstrate the defendant's sales, while the defendant bears the burden of proving all claimed costs or deductions.

Moreover, the court has discretion to adjust the amount of recovery if it deems the awarded sum inadequate or excessive, ensuring fairness based on the circumstances of the case. Such adjustments are considered compensation rather than penalties. Additionally, in exceptional cases, the prevailing party may be awarded reasonable attorney fees.

For instances involving the intentional use of counterfeit marks, the court may award treble damages—three times the profits or damages, whichever is greater—along with reasonable attorney fees. Prejudgment interest may also be awarded, up to the court’s discretion, commencing from the date of service of the claimant's pleadings and at an annual interest rate established under 26 U.S.C. § 6621(a)(2). The intentional use of a mark or designation is defined by the knowing unauthorized use of the mark as a counterfeit, in connection with sale, offer for sale, or distribution of goods or services.

Alternatively, plaintiffs have the option to seek statutory damages for the use of counterfeit marks. A plaintiff may elect, at any time before final judgment is rendered, to recover statutory damages instead of actual damages and profits warranted under 15 U.S.C. § 1117(a). Such statutory damages shall be determined to: (1) range from $1,000 to $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) up to $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just, if the court finds that the use of the counterfeit mark was willful.

Understanding these provisions is crucial for both plaintiffs and defendants involved in trademark litigation, ensuring fair and appropriate remedies are pursued within the legal framework.

ELO strives to best advise clients on the intricacies of trademark practice – contact the office directly for additional information or to schedule a consultation today!

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ELO works with clients to handle a host of trademark licensing issues.

A trademark license is a legal agreement in which the owner of a trademark –the “licensor”– grants permission to an interested party –the “licensee”– to use the trademark in connection with the marketing of goods and services.

Beyond the general principles of licensing, trademark licenses involve unique considerations. Central to the value of a trademark is its “goodwill,” which represents the reputation for quality associated with the source of goods and services sold under the mark. When a trademark owner directly controls the use of the mark, they can maintain and enhance this goodwill. However, in a licensing arrangement, the licensee utilizes the owner’s mark on the licensee’s own goods or services, raising critical concerns related to quality control, consumer confusion, and the preservation of the trademark owner's goodwill.

To address these issues effectively, trademark owners must implement robust quality control measures to ensure that the licensee's use of the mark maintains the standards associated with the trademark. This includes provisions in the licensing agreement that outline specific quality standards, inspection rights, and procedures for addressing any deficiencies in quality. By safeguarding the integrity of the trademark, the owner can protect the goodwill associated with their mark and preserve the value derived from its development and reputation.

Additionally, it's important for trademark owners to consider the territorial scope of the license, any limitations on sublicensing, and provisions for monitoring and enforcing the licensee's compliance with the terms of the agreement. Failure to adequately address these issues can result in dilution of the trademark's value and potential legal disputes.

Moreover, under U.S. trademark law, a trademark owner may be required to exercise sufficient control over the quality of goods or services offered under the licensed mark to avoid the risk of abandonment or loss of trademark rights. This principle, known as "naked licensing," underscores the importance of maintaining active oversight and control over licensed uses to ensure the continued strength and distinctiveness of the trademark.

By carefully addressing these considerations in the licensing agreement, trademark owners can effectively leverage their intellectual property assets while safeguarding the reputation and value associated with their trademarks – contact ELO directly for additional information or to schedule a consultation today!

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Ensuring the availability of a trademark for use and registration is a pivotal step in the branding process. Unfortunately, it's a step often overlooked or underestimated, as individuals may rely solely on easily accessible online searches, leading to a false sense of security regarding the proposed trademark's availability. Merely searching for an exact mark on platforms like the USPTO's website can be misleading, as it may not uncover potentially conflicting trademarks.

Finding –or not finding– an exact match is merely the beginning of a proper trademark search. Conducting a thorough search requires more than just identifying exact matches; it involves assessing the likelihood of confusion with existing registered and pending trademarks. The USPTO conducts its own search during the examination of trademark applications, typically providing its findings within 5-6 months. While this timeframe may suffice for some, businesses with imminent product launches or service industry debuts may benefit from conducting a preemptive trademark search to assess viability before official examination.

Written legal opinion letters on the validity of proposed marks may serve as crucial due diligence documentation, making it more difficult for a challenger to label the trademark user as a "willful infringer."

Moreover, under the Lanham Act –i.e. Title 15 U.S.C. §§ 1051 to 1127–, demonstrating willful infringement can significantly impact the outcome of legal proceedings and influence a court's decision, resulting on increased damages and even reimbursement of attorney fees (15 U.S.C. § 1117). A party found to be a willful infringer may face heightened penalties, emphasizing the importance of thorough trademark clearance procedures and legal guidance in navigating the complexities of trademark law.

By proactively obtaining legal opinions on proposed trademarks, businesses can mitigate the risk of infringing on existing trademarks and protect their brand reputation and investments – contact ELO directly for additional information or to schedule a consultation today!

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An entity or individual anticipating harm from the federal registration of a mark with the USPTO has the option to initiate either an opposition proceeding or a cancellation proceeding. Such proceedings fall under the jurisdiction of the U.S. Trademark Trial and Appeal Board (TTAB). An opposition proceeding occurs during the trademark application's prosecution phase, while a cancellation proceeding can be initiated post-registration.

In an opposition proceeding, akin to civil litigation, the involved parties engage in discovery, summary judgment, and a trial period. However, unlike traditional courtroom trials, TTAB trials primarily rely on written submissions and deposition testimony, with a decision then transmitted to the parties. Although similar in nature, a cancellation proceeding seeks to invalidate a registered trademark, whereas an opposition proceeding presents a challenge to a pending application.

Instances may arise where parties attempt to register trademarks conflicting with a client's branding or business strategies. Alternatively, clients may seek to utilize trademarks previously registered but find the registered owner no longer using the mark as claimed, or unlawfully obtained another’s mark in the first place. Both scenarios require challenging objectionable trademark applications or registrations, which is where ELO can help.

Opposition and cancellation proceedings constitute specialized quasi-litigation conducted before the TTAB, governed by both the Federal Rules of Evidence and Civil Procedure, as well as TTAB-specific rules.

Understanding the nuances of these proceedings is vital for effectively protecting clients' trademark rights and addressing potential conflicts within the trademark landscape. Contact ELO for additional information or to schedule a consultation today!

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In today's digital landscape, the Internet plays a pivotal role in the business operations of most clients. As such, securing quality legal representation in matters concerning electronic content and domain name protections is paramount.

Domain name governance draws from various legal doctrines, including the U.S. "anti-cybersquatting" statutes, World Intellectual Property Organization (W.I.P.O.) rules, Uniform Dispute Resolution Policy (U.D.R.P.) guidelines, and rules outlined by the Internet Corporation for Assigned Names and Numbers (I.C.A.N.N.).

It is crucial to identify that domain name protection is closely intertwined with trademark protection. Pursuant to the Lanham Act, trademark holders possess a cause of action against individuals who, with a malicious intent to profit off the goodwill from another’s mark, proceed to register, traffic in, or utilize a domain name identical to or confusingly similar to a distinctive mark, or is found dilutive of a prominent mark, regardless of the goods or services involved.

Determining whether a domain name has been registered in bad faith involves assessing various factors, including:

• Whether the registrant holds any trademark or intellectual property rights in the name;

• Whether the domain name corresponds to the registrant's legal or nickname;

• The registrant's prior bona fide use of the domain name in connection with goods and services;

• Whether use of the domain name falls under fair use doctrine;

• Intent to divert traffic to a site that could harm the trademark owner's goodwill;

• Offering to sell the domain name without having used it, without having had the intent to use it in a bona fide context, or a previous pattern of such conduct;

• The provision of misleading contact information in the domain name registration application;

• Warehousing multiple domain names potentially infringing on –or dilutive of– distinctive or famous marks; and

• The extent to which an aggrieved mark is distinctive or famous.

In addition to traditional trademark remedies, plaintiffs may opt for statutory damages, ranging from $1,000 to $100,000 per domain name, under the Anti-Cybersquatting Piracy Act (A.C.P.A.) and the Lanham Act § 43(d) (15 U.S.C. § 1125(d)).

Victims of bad-faith domain name registrations, aimed at profiting from or misleading consumers regarding authentic trademark sources, require legal counsel well-versed in this evolving legal domain. For further guidance or to arrange a consultation, please don't hesitate to contact ELO today!

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