ELO works with our clients to handle trademark and trade dress litigation in the federal courts, as well as cancellation and opposition proceedings before the USPTO’s Trademark Trial and Appeal Board (TTAB).
The practical business needs involved in trademark disputes always remain ELO’s primary focus, and, when appropriate, the expeditious end of litigation, including obtaining the benefits of alternative dispute resolution remains a critical aspect of these cases from inception. If the controversy results in civil action, 15 U.S.C. § 1117 governs damages, providing:
Profits; damages and costs; attorney fees
When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office is established, the plaintiff shall be entitled to recover: (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits, the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed.
If the court finds that the amount of the recovery based on profits is either inadequate or excessive it has the discretion to enter judgment for such sum as it shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party.
Treble damages for use of counterfeit mark
In assessing damages, the court shall, unless it finds extenuating circumstances, enter judgment for three times such profits or damages, whichever is greater, together with a reasonable attorney’s fee, that consists of intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark, in connection with the sale, offering for sale, or distribution of goods or services. In such cases, the court may in its discretion award prejudgment interest on such amount at an annual interest rate established under 26 U.S.C. § 6621(a)(2), commencing on the date of the service of the claimant’s pleadings setting forth the claim for such entry and ending on the date such entry is made, or for such shorter time as the court deems appropriate.
Statutory damages for use of counterfeit marks
In a case involving the use of a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under 15 U.S.C. § 1117(a), an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the amount of – (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.
The importance of protecting a business’s valuable goodwill, existing in its marks, and establishing and protecting trade dress rights in products and product related services cannot be underestimated. Contact us for additional information or to schedule a consultation.
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