A recent case out of the southern district of New York, Bath and Bodyworks Brand Management Inc v Summit Entertainment LLC, discusses the affirmative defense of advice of counsel in a trademark infringement lawsuit. Put simply, the advice of counsel defense is one in which an alleged infringer relies upon advice it had previously sought from trademark counsel in order to avoid a finding of willful infringement. Keep in mind willful infringement carries with it enhanced statutory damages under the Lanham Act. Therefore, in the event that the alleged infringer had retained a trademark lawyer, secured a trademark availability assessment or trademark clearance opinion, and relied upon the trademark attorney's opinion in making use of a particular trademark, the advice of counsel defense may be applicable.
However, using the advice of counsel defense requires that the attorney-client privilege is waived to a certain extent. Thus, if the trademark opinion letter identified risks and set forth recommendations contrary to the actions taken by the alleged infringer, it may not be worthwhile for the alleged infringer to assert the advice of counsel defense. Moreover, there may be other reasons why waiving the attorney-client priveiige may not be advantageous. Nonetheless the advice of counsel defense is one worth considering in the event that the alleged infringer did indeed obtain a trademark opinion letter prior to making use of the mark.
Whether or not an advice of counsel defense is successful in a trademark infringement lawsuit depends on the facts and circumstances of the case. Regardless, this New York case and the concept of the advice of counsel defense simply reinforces the importance of securing a trademark availability assessment or trademark clearance from a trademark attorney prior to making use of a mark. If the trademark clearance revealed that such use would subject you to claims of trademark infringement, then you would have the opportunity to avoid such risks by choosing a different mark. Alternatively, if you were advised that the use is permissible, only to be sued for trademark infringement in the future, you could rely upon the trademark clearance and opinion letter from trademark counsel as an affirmative defense to avoid a finding of willful infringement and the statutory damages that go with it. As such, following the typical steps of a trademark clearance prior to trademark registration of trademark use is advantageous to you and your business. A trademark attorney can guide you through these steps and advise you as needed.