What are typical costs of trademark litigation?
Trademark lawsuits are expensive, with attorneys charging $200+ per hour. A full case averages $120,000 in fees per party. Even a month's work can cost $40,000. Assess if the dispute justifies such expenditure.
How to determine if a mark is worth litigating over?
Evaluate the mark's value to your business—customer recognition, goodwill, potential losses from infringement. Weigh against litigation costs; not all disputes merit court action.
Can attorneys' fees be recovered in state court for trademark cases?
In most states, losers don't pay winners' fees; each covers own. Some states (e.g., Colorado, North Carolina) award to prevailing party routinely; others (e.g., Alaska, Iowa) discretionarily in exceptional cases.
Can attorneys' fees be recovered in federal court for interstate marks?
Federal law allows fees to victorious plaintiffs in exceptional cases (obvious intentional infringement). Don't rely on recovery unless bad intent clear.
How can treble damages assist with attorneys' fees?
Courts must award triple damages and disgorge profits for willful infringement. Excess funds beyond actual harm can cover fees. Lawyers may defer payment until settlement/judgment, as injunction often stops use, enabling fee recovery from damages.
What is litigation short of trial in infringement cases?
File suit seeking preliminary/temporary injunction to halt infringing use pending trial. Requires showing irreparable harm (e.g., goodwill loss) and probable success. Often leads to favorable settlements, as injunction disrupts infringer early.
Why beware of being right in litigation?
Even if legally correct, costs may outweigh benefits. Prolonged disputes drain resources; settlements preserve goodwill. Litigation risks business relationships and public perception.
Why prioritize negotiation over litigation in disputes?
Negotiation is faster, cheaper, preserves relationships. Litigation adversarial, costly, time-consuming (years), uncertain. Most disputes settle; focus on business solutions like coexistence agreements.
What structured negotiation methods resolve disputes?
Arbitration: Parties select/pay arbitrator(s); rapid (weeks/months), rules from organizations like AAA or JAMS. Final decisions enforceable; binding unless specified otherwise. Choose expertise (e.g., trademark lawyer). Beware unconstrained decisions.
Mediation: Neutral facilitates voluntary agreement; non-binding, allows later litigation. Organizations like AIPLA, INTA, or mediate.com provide mediators. No attorney needed, but useful for advice/drafting.
What is ICANN arbitration for domain name disputes?
Non-binding under ICANN rules for trademark-domain conflicts; initiates transfer if cybersquatting found.
How to handle an infringer step-by-step?
Follow systematic approach to resolve without immediate litigation.
Step 1: What to discover about an opponent's mark?
Research registration status (federal/state), use dates, territories, goods/services. Use PTO databases, state offices, common law sources (directories, internet).
Step 2: How to determine who is the infringer?
Assess priority: first user prevails. Evaluate confusion likelihood, dilution, cybersquatting. If your mark senior, stronger case.
Step 3: What research on the opposing business is useful?
Gather details: size, profitability, market share, expansion plans, mark attachment. Identify decision-makers. Stronger opponents may negotiate harder; weaker may concede.
Step 4: How to initiate contact with an infringer?
Write cease-and-desist letter: state facts, assert rights, demand stop use/change, set deadline. Use certified mail; avoid threats. Tone firm but open to discussion. Sample letters guide structure.
Step 5: What strategies apply in negotiation?
Call post-letter; propose solutions (e.g., phase-out, territorial limits, licensing). Focus on mutual benefits; listen actively. If needed, escalate with lawsuit threat but prefer settlement.
Step 6: What other dispute resolution options exist?
If negotiation stalls, pursue mediation/arbitration for collaborative resolution before court.
Step 7: When to consult an attorney?
If steps fail, seek trademark lawyer for advanced strategies, mediation/arbitration assistance, or litigation. Lawyer may confirm no viable case or advise pursuit.