Trademark Litigation Process & Overview

If you are in possession of a trademark, litigation can take place in either a case where you believe that someone is infringing on your trademark or if you are accused by another party of infringing on theirs.

Establishing your trademark with the help of a trademark attorney will go far toward avoiding loss of that valuable property.  The attorney’s groundwork will  establish your rights to the mark, whether defending it from unauthorized use by others or defending you against accusations of trademark infringement.

Trademark litigation can involve one or more of the following:

• Proving the “likelihood of confusion” between two conflicting trademarks.  The plaintiff must prove that the accused infringer, by using a mark belonging to the plaintiff, will create confusion among consumers as to who is providing the product or what the product is.
• Breach of contract
• Breach of fiduciary duty

These latter two might take place as a result of a licensing agreement that was violated.  If the licensee failed to provide adequate quality products, the licensor’s trademark and reputation could be damaged. There are a host of other categories under which a trademark holder may find protection and all of them can be litigated.

• If you have more questions or may need legal assistance regarding a Trade Mark matter, Consult Your Case for Free with a local experienced Intellectual Property Lawyer.

The procedure would ordinarily follow a form such as this one:

Following a search and discovery of unauthorized trademark use, a “cease and desist” letter might be sent.  This would be the common sense first step which might avoid what is usually expensive litigation.

1. Negotiation and settlement options could be explored.  These might include a licensing or other agreement.
2. In the absence of an agreement, the aggrieved party will file suit and request relief from the court.
3. The court may or may not order the defendant to temporarily cease using the mark.
4. The defendant must file a statement of Defence within a predetermined, but short, time.
5. The facts are established through the discovery process used in the jurisdiction.
6. If the facts do not suggest a resolution, the case goes to trial.

Defence against such an accusation could include:

• Challenge – and counterclaim – to the plaintiff’s right to the trademark
• Expiration of Trademark
  
• A claim that the trademark was obtained by fraud
• A claim that the trademark was not in use
• A claim that the trademark is in common usage, or for some other reason cannot be enforced.
• Denial that any or enough similarity exists between the two marks or between the two product lines.
• Denial that there is sufficient overlap in the geographic business areas served by the two parties.

Trademark litigation involves all the procedures of court action and usually is over relatively large financial stakes and at a significant cost. The case can possibly go through more than one level of the justice system.  There are many possible permutations and a trademark attorney is indispensable in choosing the appropriate course of action.

• If you have more questions or may need legal assistance regarding a Trade Mark matter, Consult Your Case for Free with a local experienced Intellectual Property Lawyer.