Issues in Trademark Case Management Kate Fritz David Bernstein Peter Harvey Annette Hurst What makes trademark cases different? Emotional subject matter issues of identity Sense of urgency market realities Injunctive relief frequently sought Result of TRO/preliminary injunction can be outcome determinative Consumer surveys frequently critical Limited, focused discovery often helpful 2 1
Economics and market dynamics that drive trademark litigation Product differentiation: avoiding confusion Protect it or lose it: Keeping the field uncrowded Growing role of brand identification and advertising in the economy Entertainment: Brand integration Sports: Logos, official sponsors and spokespersons 3 Example: Trademark dispute Marks: THE CLASSICAL CHILD vs. CLASSICAL KIDS Products: Classical music for children Issue: Are consumers likely to be confused? Mavrides v. Hammond, Civ. No. C92 3466 SC (N.D. Cal.) 4 2
Example: Trade dress/dilution dispute Levi Strauss v. Abercrombie & Fitch, 2011 WL 383972 (9th Cir. 2011) 5 TYPICAL TRADEMARK CASES, CLAIMS AND TIMELINES 6 3
Trademark Case Typology Competitor Cases Non competitor Cases Policing Small prior user Licensor/Licensee Cases Domain Name Cases Dilution Cases Counterfeiting 7 Lanham Act & State Law Claims Federal Claims (Lanham Act) Infringement Dilution False Advertising State Law Claims Infringement State Registered Marks State Trade Name State Common Law Dilution False Advertising Business Torts Deceptive/Unfair Trade Practices Trade Libel Unjust Enrichment Right of Publicity 8 4
Typical Timeline(s) & Procedures Complaint TRO/Preliminary Injunction Frequent Types of Cases Evidence Expedited discovery Survey Live testimony Hearing/Argument Case Management Mediation/Settlement Trial 9 Preliminary Injunctions: Scope and Components Requirements Traditional balancing criteria Presumption of irreparable injury? Judicial Discretion in Fashioning Qualification Examples Geographic limitations Disclaimers/mandatory use of other names/logos Logo/mark alterations or limitations Limitations of use on goods/services Definiteness/Contempt Motions 10 5
PRE TRIAL AND TRIAL MANAGEMENT ISSUES IN TRADEMARK CASES 11 Typical Concerns Pretrial & Trial Management Jurisdiction and defaults (counterfeiting) Bench or jury trial Damages theories in trademark cases Consolidation of PI hearing with trial on merits Planning for trial of equitable issues and defenses Advisory jury, binding jury or bifurcation Daubert hearing surveys, likelihood of confusion expert, damages Rule 706 experts 5/22/2015 Trademark TM Case Case Management 12 6
Interaction with Trademark Office Proceedings Concurrent Federal Court and Trademark Office Proceedings Prior Trademark Office Actions B&B Hardware v. Hargis Industries 13 Survey Experts and Reports Parties often use surveys to prove/disprove: Genericism: is P s mark generic? Secondary meaning: is P s mark distinctive? Likelihood of confusion does D s mark infringe? Challenges to surveys include: Universe were proper consumers interviewed? Format were questions leading or suggestive? Control was guessing or noise removed? Question: Are surveys essential? 14 7
Post Trial Proceedings Equitable defenses Permanent injunction hearing Mandatory injunctions (recalls) Seizure of instruments of infringement Attorneys fees exceptional case standard Enforcement of judgment Contempt hearings 5/22/2015 Trademark TM Case Case Management 15 Damages 35 (a) Profits, Money Damages, attorney fees: Notice required - either: (1) 29 Notice: Registered in U.S. Patent and Trademark Office Reg. U.S. Pat. & T. Off. (2) Actual Notice e.g., cease and desist letter (b) Treble Damages for willful use of a counterfeit mark (c) Election of Statutory Damages (counterfeit marks) (d) Election of Statutory Damages (domain names) 8
Damages 35: Attorney Fees 35(a) The court in exceptional cases may award reasonable attorney fees to the prevailing party. same boats, teaching curriculum, itineraries, and procedures for student feedback website uses identical marketing, including FW boat student testimonials from students who took classes with VISS founder while he worked at FW Consistent with Octane Fitness, a district court may find a case exceptional, and therefore award attorney fees to the prevailing party, if (a) there is an unusual discrepancy in the merits of the positions taken by the parties or (b) the losing party has litigated the case in an unreasonable manner. while culpability may play a role in determining whether a case is exceptional, it is not required. Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3d Cir. 2014) SETTLEMENT DYNAMICS IN TRADEMARK CASES 18 9
TM Settlement Drivers Brand protection Existing investment/pending product launch Future expansion (own or other party s) Fair competition Transaction costs of litigation Limited availability of fees 19 Common Settlement Components Cease or modify TM use Stipulated Permanent Injunction? Transfer of TM rights? Time for phase out Corrective measures Money payment damages to TM owner defray cost of TM change Attorney s fees Scope of Use/Coexistence License Non monetary benefits 20 10
Common TM Settlement Structures Cessation Cease use and pay damages Cease use without payment Cease use in exchange for payment Modification Corrective measures Agreement on Concurrent Use License Limited Use/Coexistence Agreement 21 DISCOVERY ISSUES IN TRADEMARK CASES 22 11
Using Discovery to Focus on the Key Issues and Manage the Case Allowing limited discovery re jurisdiction Priority: Who made trademark use first? Likelihood of confusion elements In a trade dress case, what are the components of the claimed trade dress? Is the mark distinctive (source designating)? Defenses: Genericness, abandonment, laches, acquiescence, crowded field 23 E. & J. Gallo v. Proximo Spirits (E.D. Cal. 2012) 24 12
E. & J. Gallo v. Proximo Spirits (E.D. Cal. 2012) 25 13