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Written by : Tegan Bede
Current : 1919
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I am trademark litigation attorney Enrico Schaefer and today on five things you need to know we're gonna be talking about five things you need to know about trademark litigation a lot of clients come to us and they say hey I've got a trademark infringement matter I've got a competitor or someone else who's infringing my trademark I want to file a lawsuit but you know what rarely do you ever start out by just filing a lawsuit there's a lot of things that you need to know before you step into court so on today's five things you need to know we're gonna be talking about trademark litigation the first thing you need to know about trademark litigation is that trademark cases are fact-intensive that means that there are very few hard and fast rules about who's gonna win who's gonna lose each case is different there are so many factors that go into the issue of whether or not someone is infringing your trademark that it is impossible to simply tell you what the result is going to be and as we always tell clients one fact can change the result and sometimes those facts don't reveal themselves until you're well into the case so trademark cases are fact-intensive the more facts you get to your trademark litigation attorney the better that attorney is going to be at telling you your odds of winning number two trademark cases can be expensive all intellectual property cases can be expensive patent cases are the most expensive but trademark cases are not far behind how much should you expect to spend if you get involved in trademark litigation typically you're looking at well into the hundreds of thousands of dollars to take a case from beginning to end now now all cases are gonna go from the very filing of the complaint all the way to a jury verdict many cases get resolved along the way and obviously if it resolves sooner you're going to pay less but you need to be able to fund the litigation and you need to be able to handle the legal fees which are going to quickly escalate into the the hundred thousand dollar range once you get into discovery in many instances it's well worth it to litigate your trademarks to protect your marks and extend your brain and the price of Poker is going to be well worth the result you're going to achieve number three tip in the world of trademark litigation you always need a battle plan you need to define the strategy and define the battle plan before you step into court that means you need to get your lawyer the facts let the lawyer research the law to see how they apply to your particular facts in your particular jurisdiction so that the lawyer can get you educated and help you understand exactly what the odds are of winning and more importantly to define a strategy to achieve your specific goals ever even clients goals are different you want a lawyer who's gonna find out what your goals are and to find a battle plan that is going to achieve those goals we always say that the law is a five-lane highway a lawyer can drift back and forth from shoulder to shoulder all day long and it's all legitimate they're still on the road but are they really advancing down the highway and the answer is no a good trademark litigation attorney will have a very defined very detailed battle plan at the beginning of the case before stepping into court all designed to achieve your goals number four you need to understand your case you need to understand the law you're the one that's gonna be making the decisions as you roll forward down the litigation highway you need to be in a position to say yes or no to decide a lot of important issues like how much Discoverer you're gonna do whose depositions are you gonna take what evidence do you have to bring to bear to help your lawyer win without understanding the law you're never going to be able to understand these issues and you're not gonna be much of a help we at traverse legal believe in a very well informed client we demand that you participate we demand that you understand the key legal principle so you can help us win your trademark litigation case number five number five number five is that trademark litigation can take a long time you need to be prepared for the long haul it sometimes takes 12 to 24 months to work your way through a jury verdict and not all cases settle before trial so you need to be committed to the case it's not enough that your lawyer is committed you need to be committed from beginning to end and be prepared to participate it's not only the soft cost of or the hard cost of paying the attorneys but it's the soft cost of time and resources that you are going to expend to help win your case those are our five tips for trademark litigation for the day and we'll see you next time on five tips here at Travis legal
Thanks for your comment Elwood Anagnost, have a nice day.
- Tegan Bede, Staff Member
hey bosses it's boss attorney bri and welcome back to my channel this is the place for content creators and entrepreneurs to come to boss up their business the legal and legit way today we are going to be talking about how to win your trademark infringement suit or how to avoid trademark infringement altogether we're going to be talking about this because on this channel we always discuss how to get a trademark why you need a trademark get a trademark get a trademark but what happens if you're the one that's actually copying someone else's trademark you want to learn how to get yourself out of that situation but before we get started on that i do have to always give my disclaimer that this channel is intended for informational purposes only and is not intended to be legal advice if you need help with your particular situation be sure to consult with an attorney and it could be me if you choose to so let's get right into it or we can talk about how to win a trademark infringement action or how not to infringe on someone else's trademark we have to talk about what the purpose of a trademark is remember having a trademark is basically having a brand identifier your trademark is to prevent other people from using a name that is the same or similar to yours when promoting their brand that is the same or similar to yours so basically it distinguishes your brand from the brand of another so this is why you cannot have one that is the same as someone else who is also producing products that may be similar or that are exactly the same so next let's talk about infringement infringement occurs when you are using someone else's name or a similar name to someone else and you're using it to promote your own products or services it can also happen when you are intentionally copying someone promoting your actual products as those of another or it could be a situation where you are producing counterfeit goods and selling them as your own one big example that i see all the time is when people make mickey mouse ears or minnie mouse ears that disney usually sells that is considered to be putting off counterfeit goods even if you're not putting these are from disney on there it can still be considered counterfeit goods because who makes those ears disney does if disney does not give you a license to make those ears it's very likely that you are committing trademark infringement putting your business out there as if you are actually disney even if you're calling it you're not calling it a disneyland or whatever disney calls it but you say like disney ears or something of that nature then it's very likely that you're committing trademark infringement okay so in order for someone to win against you on a trademark infringement case they have to balance certain factors to show that your trademark is the same or confusingly similar to what they are using as their trademark and it's a balance of factors it's not a strict test that okay if you do this you do that you do that that means that you're committing trademark infringement instead you're gonna balance several factors which i believe the main ones are about seven and then there are 12 or 13. something like that i can't remember the exact number right now but there are multiple factors that the court can consider but there are a couple of main ones that they mostly consider when i file trademark applications for my clients i also consider these factors when i find a trademark that is similar to one of my clients training okay so one of the first things that are considered when deciding whether someone is infringing on your trademark is determining who's the actual owner of the trademark let's say that someone has a trademark registration with the uspto but you've been using your business name for a lot longer than they have it's very possible that you can that you may be able to prove that you're the actual owner of the trademark therefore you wouldn't be committing trademark infringement they would be committing trademark infringement but you will have to show that you are the one that are is actually the owner of the trademark and then that may come with some other things that proven that hey i've been using it for longer they actually had noticed that i was using it and all these other factors that fall into trademark infringement you would basically have to be proven that hey no you're actually the infringer on the case okay next you and the person suing you have to be using the trademark so it can't be a situation where you are planning to start using a mark as your brand identifier but you never actually start selling things under that name you never start putting it out to the public then you will not be committing trademark infringement trademark infringement happens as soon as you put your product or your service out to the public under a certain name so you are using that trademark if you are copying someone then you are committing trademark infringement as soon as you put it out there to the public to let them know that you are participating in commerce you also must show a likelihood of confusion and you may hear a lot of trademark attorneys bring this up when you are seeking to file your trademark because that is one of the main reasons or the main reason that your trademark will get refused if it is likely to be confused with another trademark something similar something the same or something similar if it is likely to be confused by consumers then it is very likely that you will not get your trademark register so we talked about this a little bit in another video when we were talking about office actions but one of the main factors that the examiners consider and that courts consider when they're determining whether trademark infringement is happening or whether your trading market is confusingly similar to someone else's is that they go through the similarity of the marks this is going to include whether the marks are similar in sound appearance connotation and commercial impression if you want further details on what those things mean make sure to go back to our last video talking about confusingly similar office action refusals to get a little bit more detail of what those things mean the next thing that the court is going to consider is the similarity between the products and services or the goods or whatever you're actually selling what is the similarity between those two like i said in that other video for office actions for confusingly similar marks they're going to consider whether you're actually doing the same thing as the person that is claiming that you are infringing on their trademark sometimes the classes there are multiple things that fall into the classes and they're not likely to be confused with each other when we're talking about apparel if you're doing t-shirts and they're doing t-shirts then yes that's very likely to be confused with each other but you're if you're actually only a t-shirt company and someone starts producing shoes with the same name as you it's a possibility that that can be seen as different it's just going to depend on the circumstances of your situ
Thanks peberatsX your participation is very much appreciated
- Tegan Bede
About the author
I've studied viticulture at Champlain College in Burlington and I am an expert in palaeoarchaeology. I usually feel satisfied. My previous job was reporter I held this position for 27 years, I love talking about skiing and paintball. Huge fan of The Beatles I practice darts and collect match-related items.
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