Tag: Trademark Litigation

Trademark Litigation and Expert Testimony

As you attempt to argue and present the case for your trademark to a judge or jury, the use of expert testimony can be an effective way to explain complexities. Opinion-based expert testimony is even permissible so long as it assists with determining facts or understanding evidence regarding specialized knowledge. Expert testimony must be relevant and reliable, although it is ultimately up to the court as to whether specific testimony is admissible or not. It is recommended that experts be hired as soon as possible to ensure you are getting the best and to provide guidance and assistance with preparation. Experts providing testimony must also submit a report with all their complete statements and list of materials. The opposing parties must exchange these reports prior to the trial. Experts can also provide depositions. Expert testimony is very useful, but remember it can increase the costs of litigation just like other options such as survey evidence. Defending your trademark is not easy, but obtaining an attorney, experts to provide testimony, and other forms of evidence then you can strengthen your case.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Evidence of Confusion

If your registered trademark or trademark application ends up going in to litigation against another trademark, then a major issue is usually whether or not there is actual confusion with the other trademark. If this is the case, then here are a few things which could be considered evidence of actual confusion: testimony from consumers that experienced confusion and testimony or documents demonstrating mistaken or misdirected mail, orders, or phone calls. Other things may also be evidence such as a boon in sales after infringement or even investigations by secret shoppers. There are also many things that will likely not be considered evidence and may be considered inadmissible hearsay. Statements repeating statements by others, employee conversations which cannot be verified, documents unavailable for cross-examination, infrequent examples of confusion, and evidence with lacks a guarantee of trustworthiness. Survey evidence may be admissible if it meets certain high standards. Such surveys must be created by an independent expert, the survey must be given to relevant consumers, such consumers must be chosen in an unbiased manner, and be given by trained and independent interviewers. The questions must be clear, precise, and not lead the consumer. All data has to be reported and analyzed accurately and by accepted standard. The right evidence can help bolster your case.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Going to Trial

If the issues regarding your trademark and another party could not be resolved during the pre-litigation period and if summary judgment was not appropriate, then you are likely going to trial. In order to prevail you must be prepared. Your witnesses should be thoroughly vetted to ensure they are knowledgeable and will act appropriately. Exhibits will also help further your case by providing a visual of important details. Attempts should be made to predict what sort of defenses the other side will use in order to be better prepared to respond. Cross-examinations can be useful but do not save major points or information for them. There are many things that should be argued and proved. Some of the most important are ownership of the trademark, validity of the trademark, secondary meaning, and likelihood of confusion. In proving these things there are many factors which can prove useful such as strength of the trademark, similarities between the trademarks, proximity in channels of trade or advertising, plans to bridge the gap or expand usage, good or bad faith, quality of goods or services, consumer sophistication, and actual confusion. There is a lot to consider as you go to trial. Make sure you, your counsel, and witness are all prepared.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Summary Judgment

If litigation regarding your trademark cannot be avoided, then it may be best to try and end the litigation quickly. One option that can help cut costs and time is summary judgment. Summary judgment is allowed when there are no genuine issues regarding material facts. A genuine material issue of fact an issue regarding a fact that would impact the result of litigation and is an issue of fact support by evidence. The benefit of reasonable doubt is given to whichever party is in opposition to summary judgment. It is not permissible for an issue of fact to be created in order to prevent summary judgment. Summary judgment may be allowed if a case is very complex and even if likelihood of confusion is one of the issues. Minor issues of fact may also prove ineffective at halting summary judgment. Summary of judgment will likely be granted where there is a completeness of record. This means that the facts are not contested, there was a thorough discovery period, and that a trial is not necessary for proper judgment. Summary judgment has also been used successfully where there were long delays by one party and cases regarding fair use. When used correctly, invoking summary judgment can help you save time and money when fighting trademark infringement.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.