Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

Advice of Counsel Defense To Trademark Infringement

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.

Google Trademark Under Attack. Lawsuit filed claiming “Google” as Generic.

what a lot of folks understand is that we use common terms to refer to things, actions verbs and nouns for objects, so things that were trademarked in the past; such as escalator, aspirin, things like that. Those are objects, obviously. They became commonly used by the public and so became actually the word to use to refer to that object. So, here we have a situation where my client, our clients, I should say, are looking at the word Google and have recognized the fact or come to the realization that the public is using that term in a generic sense, really using it to refer to a search, to conduct a search, to search for something, whether it be on the Internet or elsewhere.

 

Play: Google Trademark Under Attack. Lawsuit filed claiming "Google" as Generic.
(click title to listen)

With: Richard Wirtz,Tom Foster

Sponsored by: Traverse Trademark Law

---

Read Show Transcript

Publish to My Site

Share on My Networks

---

powered by Vertio.net

 

How to Trademark: The Parody Doctrine - What is Fair Use and What is not Fair Use

Parody and Satire may be covered under free speech, but what if someone was infringing on your registered trademark under the guise of parody?  What rights do trademark owners have to protect their interests and what are the guidelines of what is fair use and what isn't fair use under the Trademark Parody Doctrine?  Attorney Daniel Corbett discusses this topic at length.

Announcer: Welcome to Trademark Law Radio, the definitive portal for all trademark matters on the web. Now here is your host, Damien Allen.

Damien Allen: Good morning and welcome to Trademark Law Radio. My name is Damien Allen, and today joining me on the phone is Attorney Daniel Corbett of Elliot & Davis, PC in Pittsburgh, PA. Daniel is an attorney whose practice centers on corporate law, non-profit law, estate planning, and civil litigation, as well as trademark registrations. Good morning, and welcome to the program Daniel.

Daniel Corbett: Good morning, Damien.

Damien Allen: Today we’re going to be discussing trademark parody doctrine and how it applies to fair use doctrine in trademarks. And there’s a lot of different cases that have been going on lately, and a lot of things that have been happening. Lately, you have just done a blog on North Face v. South Butt, and that’s one we’re going to talk about very soon. And there’s another couple cases where people are utilizing the design of a well-known brand and using it, spoofing it, as their saying, and using it in their own materials, and this is causing problems for trademark owners. So, I guess the first question we have to ask is how do we define the trademark parody doctrine in fair use? What is parody?

Trademark Fair Use: Some Guidelines When Making a Nominative Use of Another’s Trademark

Each situation is unique, but for example, a trademark use is likely fair when a product cannot be effectively identified without use of the trademark or when there would be no other effective way to compare, criticize, refer to or identify it without using the trademark.  This is sometimes referred to as nominative fair use.  One can even further mitigate the chances of trademark infringement issues by using no more of the mark’s appearance than is necessary to identify the product and make the reference intelligible to the consumer.  For example, if a particular word is the plaintiff’s trademark, it may be reasonably used when you do not use any distinctive color, logo, abbreviation, or graphic that the trademark owner uses to display the trademark than is necessary to identify the product.

When Can I Use a Competitor's Trademark to Compare My Goods and Services?

After your company has registered its trademarks and has a product ready for the market, it can be very tempting to boost your product through comparison with the product of a competitor. However, such comparisons must be done carefully in order to ensure that you don't infringe upon the trademark rights of a competitor in the market, who will be all too willing to file suit against you.

In instances where you would like to use the trademark of another party, there is important symbolism standards that must be followed in order to ensure that you are protected from liability. These symbols are intended to recognize and identify the owner of the trademark, keep other parties from distorting the trademarks of others, and distinguish the different companies at play.

For help in protecting yourself from the liability of a trademark infringement, contact an attorney today.