Guide to Winning Trademark Litigation

TRADEMARK = LITIGATION Guide to Winning- GRANTED LAW Trademark litigation is on the rise and this guide will take you through the steps of considering - and winning -a trademark case When to Pursue TRADEMARK LITIGATION? LITIGATION is not always the answer 25% 50% 5.5% In 25% of cases where small If a case makes it to court, a trademark holder only has a slightly better than 50% chance of winning based on merits There is only a 5.5% chance any damages will be found businesses have been sued, the business was able to settle in advance of trial Tips for WINNING LÍTIGATION COLLECTING INTELLIGENCE & EVIDENCE The use of a notary public may be required to guarantee the authenticity of the evidence Registration certificates Plaintiff's identity If the issue is international, the trademark may have to be registered in the foreign country as well Official documents should be notarized and legalized in the country of origin US $$$ The infringing mark Infringement profits Provide an original of the product. The acquisition process of this evidence must be notarized Include any reports related to the financial benefit to the infringer as this can help prove profits made by the trademark infringement Use & reputation of the trademark The longer and more intensively a mark has been used and the greater its reputation, the better the protection for the trademark. Include: O Foreign trademark registrations and records of foreign protection O Records of protection by an AIC or court O Invoices, contracts and audit documents issued by a certified public accountant in relation to sales of products bearing the mark O Details of any awards or prizes won by the product or company bearing the mark C PURSUE PROPERTY PRESERVATION Request the judge freeze the infringer/defendant's assets to preserve them as is and enable complete evidence acquisition and inspection Many times an infringing company with frozen assets will be more willing to settle the case out of court without the need to go to trial шm PROVING CONFUSION Assessing the likelihood of confusion involves comparing: 1. Similarity of the trademark and the goods, service, etc. between the two companies Reputation of the infringed mark 3. Bad faith or intent on the infringer's part 4. Evidence of actual confusion and sophistication of the buyer Conducting market surveys Consulting external experts Some companies have performed market surveys to demonstrate that consumers can be confused between the rights holder's product, service, etc. and the infringing one Expert opinions on the market can be brought to the trial LASTLY, APPEAL Should the decision be unfavorable, filing an appeal is always an option, especially if you have a chance at filing new evidence that could help your case TRADEMARK CASE WINS Won Nestlé registered the KitKat 4-bar shape in the UK in 2006 and Cadbury, who sells a KitKat-like bar product, attempted to invalidate the registered trademark. snack NESTLÉ Nestlé won on the grounds that the KitKat's 4-bar shape had been used by Nestlé for so long that consumers associate the shape with the brand. CADBURY Gucci sued Guess over a diamond-patterned G logo found on clothing made by both brands. Won Gucci won their case in 2012 where courts in New York ordered Guess to pay $4.7 million. GUESS In 2013, Guess won their counterclaim in Italy where the court granted Guess's requests to have three of Gucci's registered trademarks nullified, including the diamond-pattern, G logo, and a flora pattern. GUCCT Won BeautyBank, a subsidiary of Estée Lauder, filed and won a trademark infringement lawsuit on the grounds that Ageless Fantasy's EAU FLIRT-branded perfume advertising was in bad faith. Estée lauder Ageless Fantasy's perfume claimed it was Ageless Fantasy BEAU YBANK clinically proven to make men flirt with women, which competed against BeautyBank's FLIRT line of cosmetics. AGELESS CONCÉPTS CONCLUSION Protecting your trademark against future infringment with litigation can be a daunting task. However, following these guidelines will increase your chances of success. Sources: ® Secure YourTrademark.com law.wlu.edu/deptimages/Law%20Review/65-2Port.pdf www.uspto.gov/ip/TMLitigationReport_final_2011April27.pdf www.internationalpatentservice.com/Lets-Sue-That-Trademark-Infringer.html www.law360.com/articles/483329/estee-lauder-unit-wins-3-6m-in-ip-false-ad-row www.lexology.com/library/detail.aspx?g=e8239a31-a721-4c16-9905-57522de78ea2 www.intellectualpropertynews.com/trademark-news/coca-cola-opposes-cocaine-trademarks-in-chile/ www.nolo.com/legal-encyclopedia/likelihood-confusion-how-do-you-determine-trademark-infringing.html fashionista.com/2013/05/in-the-battle-of-gucci-vs-guess-italian-courts-side-with-guess-and-cancel-gucci-trademarks www.corporateservicecenter.com/nevada-inc-whitepapers_files/288d913762ca4df36bdflaf0e7804ef4-0.php