Litigation

Trademark Litigation

M & K’s Trademark Litigation and Trial Team

Trademark rights are increasingly crucial to the success of the modern business. When it is necessary to protect your rights through litigation, M & K’s trademark litigation and trial team is ready. We handle trademark infringement litigation throughout the country, from matters involving basic trademark, service mark or trade name infringement, to those involving claims of trade dress infringement, unfair competition, false advertising or violation of rights of celebrity.  M & K’s trademark litigation and trial team has also successfully defended against claims of trademark infringement resulting in withdrawal and dismissal of cases.

We also prosecute and defend oppositions and cancellation proceedings in the U.S.P.T.O and supervise similar proceedings overseas. Our attorneys regularly appear in both jury and bench trials in district courts throughout the country. We have handled complex trademark infringement, cancellations and oppositions proceedings and have experience in complex litigation.

We also provide our clients with infringement analyses and options for taking action against such infringement. Such efforts may include research of the infringing third party, investigation into the scope and strength of their trademark rights, if any, and sending cease and desist letters to the infringing party outlining the client’s trademark rights, the infringement situation and settlement options.

In order to prove infringement, a plaintiff must first show that it has developed a protectable trademark right in a trademark. The plaintiff must then show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The courts in the United States have established factors to determine if there is a likelihood of confusion including the following and variations of them:

  • The strength of the mark;
  • the degree of similarity between the marks;
  • the geographic and market proximity of the products;
  • the likelihood the prior owner may one day enter the market of the subsequent owner;
  • actual consumer confusion;
  • defendant’s bad faith in adopting the mark;
  • quality of the defendant’s product; and
  • the sophistication of the buyers
    Remedies available for trademark infringement: The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the mark was federally registered, attorneys fees may be available to the plaintiff. Monetary damages are available under the Lanham Act, but rarely awarded. Some considerations in deciding whether to file trademark suit:
  • plaintiffs present evidence of actual confusion;
  • whether the offending user is using the mark to sell similar goods;
  • whether defendant used the mark in commerce; and
  • whether the mark was federally registered.