Litigation
Trademark and Copyright Litigation
When your business is at risk due to a trademark dispute, our firm is prepared to aggressively protect your trademark rights. We have extensive experience representing both plaintiffs and defendants in U.S. federal courts and before the Trademark Trial and Appeal Board (TTAB). We also recognize that litigation can be costly and time-consuming, and we try to resolve disputes whenever possible—for example, by a co-existence agreement, license agreement, or purchase of trademark rights, when appropriate.
Oppositions
One can oppose another's trademark application to prevent the mark from registering. An opposition can be based on a number of grounds, including prior use of the trademark before the applicant. Commencing an opposition involves filing a complaint at the Trademark Trial and Appeal Board (TTAB). The Applicant must file an "answer" or default and lose the application. After the complaint and answer are filed, the parties conduct "discovery"—the formal exchange of information and documents to be used as evidence at trial. After trial, the case is decided by a panel of three trademark judges. Opposition proceedings can be time consuming and costly to litigate, although the vast majority of oppositions result in a default judgment (applicant does not respond to the complaint) or a settlement agreement before trial.
Cancellations
Similar to an opposition, a registered trademark can be cancelled on a number of grounds, such as prior use of the mark by the complainant or non-use (abandonment) of the mark by the registrant. The procedures are very similar to an opposition. Likewise, most cases terminate in a default judgment or settlement agreement.
Trademark Infringement Actions in Federal Court
In the most serious disputes, one party may commence a lawsuit in a U.S. federal court seeking monetary damages and/or an "injunction" prohibiting the other party from using a similar mark. The procedures are similar to oppositions and cancellations, but federal court litigation is more costly and time consuming. Often, the stakes are high in federal court litigation, as the defendant could be found liable for money damages and may be ordered to cease using the disputed mark. Often, the costs of litigation are higher than the amount of money in dispute, which may encourage settlement. As a result, the vast majority of cases settle before trial, resulting in a co-existence, license agreement, or purchase of the trademark. Hiring an experienced, aggressive litigator is critical to obtaining a favorable settlement or victory on the merits in federal court.
Our trial lawyers have an impressive track record of litigation victories and favorable settlements in both federal courts and at the TTAB, including many published decisions. We have handled over 200 federal court cases and Trademark Trial and Appeal Board proceedings (oppositions, cancellations, ex parte appeals).
Sample of Our Federal Court Litigation Victories:
| Telebrands Corp. v. NewMetro Design, LLC, District of New Jersey, Case No. 16-1981-WHW (2016) Defeated plaintiff’s motion for a preliminary injunction, resulting in favorable settlement. Read Decision |
| Golfetto Sangati S.R.L. v. Sangati Berga S.A., District of Utah, Case No. 14-00223-DN (2014) Represented Brazilian milling equipment manufacturer in U.S. trademark dispute with Italian competitor; obtained dismissal of plaintiff’s claims as part of global co-existence agreement. |
| Curtis v. Shinsachi Pharmaceuticals, California Central District Court, Case No. 14-00591-ODW (2014) Obtained judgment for client in cybersquatting case, including recovery of monetary damages, attorneys’ fees, cancellation of three federal registered trademarks, and transfer of three domain names. Read Decision |
| Ryan Kang v. Bleu Coffee, U.S. Federal District Court Case No. 14-03528-RSWL-PJW. (2014) Obtained a favorable settlement for our client in a copyright infringement matter. |
| Pearson Facial Plastic Surgery, P.A. v. J.M. Pearson, M.D., Inc., California Central District Court, Case No. 13-03440-SJO (2013) Successfully obtained a favorable settlement for our client in a trademark infringement matter. |
Sample of Our Successful Trademark Trial and Appeal Board Cases
| Team International Marketing, N.V. v. JMM Lee Properties, LLC, Cancellation No. 92057196 (TTAB 2017) Successfully cancelled CALORIC registration based on a finding of likelihood of confusion with multi-national appliance producer’s KALORIK mark for cooking appliances. Read Decision |
| Terry Nazon v. Charlotte Ghiorse, 119 USPQ2d 1178 (TTAB 2016) (precedential) Successfully dismissed opposition by showing opposer’s mark SEXSTROLOGY is merely descriptive and lacks acquired distinctiveness. Read Decision |
| Alexander Kronik v. Sayed Najem, Cancellation No. 92058162 (TTAB 2016) Successfully cancelled ALIKEU registration based on a finding of likelihood of confusion with client’s prior mark ALIKE for a social networking mobile software. Read Decision | Red Bull vs. Andale Energy TTAB Opposition No. 91210860 Successfully dismissed opposition on the grounds that the marks at issue were simply too dissimlar to cause a likelihood of confusion. Read More |
| Delta Air Lines, Inc. vs. Delta Van Lines, Inc. TTAB Opposition No. 91168554 Successfully defended our client's mark against an opposition filed by Delta Air Lines. Read More |
| Exxon Mobil Corporation vs. Jaya Medical Supplies, Inc., TTAB Opposition No. 91185716 Successfully defended our client's mark against an opposition filed by Exxon Mobile Corporation. |
| Choice First Distribution, LLC v. John L. Brown TTAB Opposition No. 92044116, Successfully cancelled the trademark CHRONIC 187 with a showing that the registration was void ab initio due to the registrant’s mere token use of its trademark. Read More |
