Litigation

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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ELO strives to successfully represent both plaintiffs and defendants in these matters and brings valuable understanding and depth to the needs of the client.

In general, an infringer of copyright is liable for either: (1) the copyright owner’s actual damages and any additional profits of the infringer; or (2) statutory damages.

Actual damages and profits
The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.

Statutory damages
The copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just.

In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.

ELO strives to bring aggressive and focused representation for the client, including the critical element of financial compensation and when appropriate, preliminary injunctions and enforcement remedies through U.S. Customs and other emergency relief. In defending against infringement allegations, the Copyright Laws’ recognition that the right to fair use is as important as the protection of the author’s rights in creation is often a critical issue. Contact us for additional information or to schedule a consultation.

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