Trademark Litigation (Lanham Act Violations)
We represent clients in prosecuting or defending trademark, service mark, certification mark, collective mark, and trade dress infringement actions. We are experienced trial attorneys who bring judgment and creativity to every problem.
Trademark-related problems that we are ready to tackle include:
Trademark infringement may occur when a trademark is used on goods or services without the owner’s permission, and that use is likely to cause confusion, deception, or mistake about the source of the goods or services.
Options available to trademark owners whose rights have been infringed may include:
- Opposition Proceeding or Cancellation Proceeding. We may be able to file a Notice of Opposition to another’s application for registration of the trademark, or to the actual registration of the trademark, with the Trademark Trial and Appeal Board (TTAB) in the United States Patent and Trademark Office (USPTO). We may also be able to apply to the Director of the USPTO for a hearing before the Trademark Trial and Appeal Board to cancel the supplemental registration of the trademark. We are equipped to handle any subsequent appeal of the final decision before the Trademark Trial and Appeal Board or United States Court of Appeals for the Federal Circuit.
- Federal Court. We may be able to go to a court and obtain:
- An injunction to stop the use of the trademark;
- A court order for the destruction of the items that are infringing the trademark;
- A money judgment for the amount of the defendant’s profits, as well as damages sustained by the trademark owner; and
- Seek an order that the defendant pay trademark owner’s attorneys’ fees.
Options available to persons who are accused of trademark infringement, or who have received a “cease and desist” letter demanding that they stop using a trademark may include:
- Petitioning to cancel the registration of another’s trademark before the Trademark Trial and Appeal Board;
- Requesting a court judgment that your trademark does not infringe someone else’s trademark; or
- Requesting a court’s judgment that that the other person’s trademark is invalid.
A counterfeiting claim may arise when someone uses any reproduction, counterfeit, copy, or imitation of a registered trademark in connection with the offer for sale, distribution, or advertising of any goods or services, where that use is likely to cause confusion, or to cause mistake, or to deceive.
Options that may be available to trademark owners whose mark was counterfeited may include obtaining:
- An injunction to make the violator stop any future use of the trademark;
- Seizure at the border by U.S. Customs and Border Protection agents of the counterfeit trademarks, the means of making the counterfeit trademarks, and records documenting the manufacture, sale, or receipt of things involved in the violation of the trademark;
- A money judgment for the amount of profits or damages;
- A money judgment in another set amount (“statutory damages”); and
- If certain conditions are met, a money judgment for three times the amount of the counterfeiter’s profits or the owner’s damages, whichever is greater, together with reasonable attorneys’ fees.
Options available if your items are wrongfully seized because someone believed a trademark owner alleged they violated the trademark, may include recovering:
- Damages for lost profits, cost of materials, and loss of good will; and ;
- Sometimes punitive damages and attorneys’ fees, including prejudgment interest.
Domain Name Disputes, Cyberpiracy, and Cybersquatters
The registration, use, or sale of a domain name that is identical to or confusingly similar to a trademark is actionable. Even if we cannot find the person who registered the domain name, we may still be able to obtain:
- Forfeiture of the domain name;
- Cancellation of the domain name; or
- Transfer of the domain name to the trademark owner.
Relief may be available:
- In federal court under the Anticybersquatting Consumer Protection Act (ACPA); or
- Under the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center’s domain name dispute resolution services.
False Advertising, False Labeling, and Unfair Competition
False statements in advertising include false claims of origin, false facts, misleading facts, false or misleading descriptions of a fact, or “passing off” or “palming off” goods as something other than what they really are. If misleading or false advertising is impacting the trademark owner, or if you have been accused of false advertising, we may be able to help.
- Federal Trademark law. The Lanham Act aims to protect persons engaged in commerce against unfair competition, including the unfair competition from false advertising.
- California Unfair Competition. Unfair competition claims may also be asserted under California Business and Professions Code § 17200, or under common law.
Gray Market (Grey Market) and Parallel Imports
The importation of genuine trademarked goods purchased in another country and brought into the United States for sale without the owner’s permission may be actionable. We can help, if the imported goods have slight variations in labeling, packaging, or quality control measures, and those variations are likely to influence consumers’ purchasing decisions.