After you obtain a trademark registration, there comes a time in many trademark owners' business dealings where unauthorized third party trademark use must be addressed. Oftentimes, a third party is using your trademark in an unlawful way so as to constitute trademark infringement, trademark dilution, or some related unfair competition. While a cease and desist letter may have been an initial option, and even subsequent negotiation may have occurred, ultimately a trademark lawsuit will have to be filed. At this juncture, a trial lawyer with experience in trademark registration and litigation is critical.
Navigating your way through a trademark lawsuit is possible, especially when client goals are identified early on. These may include ensuring that the unauthorized use of your trademark stops or that monetary damages are awarded in order to compensate you for the damages that have resulted. Identifying and understanding client goals is just as important as gathering all necessary background information relating to your trademark rights, the third party's unauthorized use of your trademark, and any other information that will be necessary in order to draft and file the complaint. The complaint is the first official step in any lawsuit and, in trademark matters, may include causes of action such as trademark infringement, trademark dilution, unfair competition, and cybersquatting. Many of these causes of action are based upon federal law, namely the Lanham Act, but state laws may also be implicated.
However, even before filing the complaint, a trial attorney can identify important considerations and discuss the advantages and disadvantages associated with the following:
- Whether to participate in alternative dispute resolution prior to filing a trademark complaint
- When to file the trademark lawsuit
- Where to file the trademark lawsuit
- What parties to name in the trademark complaint
- What causes of action to include
- Who to depose and what questions to ask in discovery
- What motions to file
- Whether to offer a settlement and at what point in the trademark litigation
- How to manage costs and fees
In conjunction with filing the complaint, an experienced trial lawyer will be able to identify what next step is necessary and when in order to achieve the goals you set forth at the beginning. For example, if you want to ensure that the unauthorized use of your trademark stops, it will be important to file for an injunction with the court. Discovery is something that can happen shortly into trademark litigation as well and may provide valuable insight into next steps. It may also be worthwhile to start discussions with the opposing counsel for the other party to the trademark litigation. This way, the goals of the client can be communicated at the outset and information can be exchanged that will tend to provide insight into where and to what extent the matter will proceed.
Ultimately, trademark lawsuits implicate risks to both parties and it is imperative that the proper steps be taken to mitigate your risks and expose those of the other party so as to enhance your likelihood of a successful outcome. While a transactional trademark lawyer may have the subject matter expertise to assist in these types of matters, a trademark trial lawyer who has handled these types of actions in court and can rely upon previous experience in similar matters will be beneficial to any client.
Please contact us should you wish to discuss your particular trademark matter and the possibility of and the need for a trademark lawsuit. If you find yourself on the receiving end of a trademark lawsuit as a defendant, all the same reasons warrant the need for a trademark trial attorney.