Dunlap Bennett & Ludwig knows trademark infringement litigation. Noted as one of the “Top 100” intellectual property law firms by IP Watchdog (2019), we have handled hundreds of trademark matters from United States Patent and Trademark Office (USPTO) Office Actions, Trademark Trial and Appeals Board cases to federal district court trademark infringement litigation. With decades of litigation experience and success, and literally hundreds of cases and satisfied clients under our belt, DBL is a national and even global leader in litigation. Winning is more important than having the name of a mega-firm on the letterhead, because at DBL, getting the right result for our client is more important than an impressive letterhead. We are fierce advocates for our clients in matters that include:
- Trademark infringement/unfair competition
- Trade dress infringement
- Trademark Trial and Appeal Board
- False advertising
- Online infringement
- Cybersquatting and domain name issues
- Merchandising and licensing disputes
How we Approach Trademark Infringement Disputes
There are a variety of ways to “win” a trademark dispute. Each case is unique and requires an experienced trademark dispute lawyer to guide and advise. There is no real secret, all trademark cases essentially come down to economics. The essential question to ask, is; “Considering all of the factors involved, what solution results in the optimal economic outcome?”
Trademark infringement cases have to be evaluated in the context of the two competing marks to determine first, whether under the relevant standard (at the USPTO this is In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)), there is “a reasonable likelihood of confusion” between the two marks. While the specific reference case varies jurisdiction to jurisdiction in federal court, the tests are very similar, looking at a number of factors to determine confusion on a case-by-case basis:
- The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
- The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
- The fame of the prior mark.
- The number and nature of similar marks in use on similar goods.
- The nature and extent of any actual confusion.
- The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
- The variety of goods on which a mark is or is not used.
- The market interface between the applicant and the owner of a prior mark.
- The extent to which applicant has a right to exclude others from use of its mark on its goods.
- The extent of potential confusion.
- Any other established fact probative of the effect of use.
After this legal analysis, once a legal determination is made, an economic calculus is required. In other words, whether pursuing or defending a trademark infringement case, or Trademark Trial and Appeals Board case (TTAB) is financially viable. TTAB cases are significantly less expensive and can be a reasonable alternative to pursing district court litigation. The TTAB remedies however are very limited and do not provide monetary damages or attorneys fee.
Taking the Case All the Way
If the parties cannot settle, then pursuing district court or even state court trademark litigation, often coupled with unfair competition, false and misleading advertising and other claims, may be the only choice. The firm has successfully handled false advertising claims under the Lanham Act, and state law false advertising statutes and unfair business practices.
Our trademark litigation attorneys:
- Defend and prosecute trademark litigation claims in state and federal courts throughout the United States and overseas.
- Have a tremendous record of highly successful cases in seeking temporary restraining orders, preliminary injunctive relief and permanent injunctive relief orders.
- Both defend and prosecute cancellations, oppositions and concurrent use proceedings the United State before the U.S. Trademark Trial and Appeal Board—and before the World Intellectual Property Organization (WIPO) and internationally through local counsel.
- Put business decision first, negotiating and settling trademark disputes in a common-sense manner before they can turn into litigation.
- Give guidance and counsel on client advertising, branding, and other trademark use to help greatly reduce the risk of future liability for trademark infringement claims.
Default judgments where there was no response filed and the filing party automatically won, are entered in approximately 68% of all Lanham Act (trademark) cases. See the chart we compiled.