{"id":137670,"date":"2026-04-08T12:45:18","date_gmt":"2026-04-08T12:45:18","guid":{"rendered":"https:\/\/my.legal500.com\/guides\/?post_type=comparative_guide&#038;p=137670"},"modified":"2026-04-20T14:33:07","modified_gmt":"2026-04-20T14:33:07","slug":"united-states-trademark-disputes","status":"publish","type":"comparative_guide","link":"https:\/\/my.legal500.com\/guides\/chapter\/united-states-trademark-disputes\/","title":{"rendered":"United States: Trademark Disputes"},"content":{"rendered":"","protected":false},"template":"","class_list":["post-137670","comparative_guide","type-comparative_guide","status-publish","hentry","guides-trademark-disputes","jurisdictions-united-states"],"acf":[],"appp":{"post_list":{"below_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Hogan Lovells US LLP<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2025\/01\/Hogan-Lovells.png\"\/><\/span><\/div>"},"post_detail":{"above_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Hogan Lovells US LLP<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2025\/01\/Hogan-Lovells.png\"\/><\/span><\/div>","below_title":"<span class=\"guide-intro\">This country specific Q&amp;A provides an overview of Trademark Disputes laws and regulations applicable in United States<\/span><div class=\"guide-content\"><div class=\"filter\">\r\n\r\n\t\t\t\t<input type=\"text\" placeholder=\"Search questions and answers...\" class=\"filter-container__search-field\">\r\n\t\t\t<\/div>\r\n\r\n\t\t\t\r\n\r\n\r\n\t\t\t<ol class=\"custom-counter\">\r\n\r\n\t\t\t\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">To represent a client before Court in respect of a potential trademark infringement matter, do you require a Power of Attorney \u2013 and if so, what are the execution formalities required by your courts?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>No. A specific power of attorney is not required. Lawyers typically formalize their relationships with clients in the form of engagement letters which set forth the terms of engagement. Such engagement letters are not, however, required by or filed with the courts.<\/p>\n<p>In order to appear before a court, attorneys must either be (a) a member of the bar of the court or jurisdiction where the litigation is brought, such that attorneys can file a notice of appearance outright or (b) a member of the bar of any jurisdiction in the United States, who then applies for pro hac vice status in the court where the litigation is pending. \u201cPro hac vice\u201d status permits an attorney to appear in the applied-for Court only in connection with the associated litigation. None of these filings require a power of attorney from the client, and courts will accept a lawyer\u2019s attestation that they represent their client.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it a requirement in your jurisdiction to send a cease and desist letter to a potential infringer before commencing proceedings for infringement? What are the consequences for a trademark owner who chooses not to send a pre-action letter?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>No. While not a requirement, it is common to send a cease and desist letter prior to initiating litigation, in many circumstances. Of course, if the infringement is resulting in irreparable or imminent harm, or other timing related considerations militate in favor of immediate filing, parties may elect to forego correspondence prior to doing so or may send such correspondence simultaneously with the filing of a complaint.<\/p>\n<p>In the absence of a contractual requirement, there is generally no specific legal requirement to send a pre-action letter prior to filing. That said, the decision to send such letter will be an intensively factual and strategic decision, and, depending on the particular circumstances, there may be various strategic reasons to send or not send such letter, including the possibility of early resolution and declaratory judgment risk, discussed below. However, disputes can, and often do, resolve even after litigation has been initiated, and the filing of litigation can itself facilitate such resolution.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, is there a risk that a pre-action letter could give rise to claim against the trademark owner for unjustified threats? What steps should a trademark owner take to ensure any cease and desist letter does not expose the trademark owner to any liability.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes. If a cease and desist letter rises to the level of creating a case or controversy between the parties, for example by accusing the recipient of trademark infringement or other claims, such cease and desist letter can give rise to what is referred to as \u201cdeclaratory judgment jurisdiction.\u201d Declaratory judgment jurisdiction permits the recipient of such letter to file a type of lawsuit known as a declaratory judgment action, whereby the recipient seeks a judgment from a court that they are not liable for the claims asserted in the letter. It effectively inverts the normal litigation posture, placing the would-be plaintiff on the defensive, and requiring them to litigate the allegations in their letter, often in the recipient\u2019s forum of choice. The defendant trademark owner may then bring counterclaims, including for trademark infringement, when responding to a declaratory judgment complaint.<\/p>\n<p>To reduce declaratory judgment risk, trademark owners may elect to avoid explicit allegations of infringement or wrongdoing, in an attempt to avoid creation of declaratory judgment jurisdiction. Trademark owners should also be reasonably assured of their chances of success on the merits of any claim they include in a cease and desist letter, and should not include claims that are frivolous or harassing.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it mandatory for the parties to have attempted mediation or other alternative dispute resolution proceedings prior to commencing infringement proceedings? If so, what is the minimum expectation?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>No. Absent contractual obligations between the parties, mediation or other alternative dispute resolution is not required prior to commencing infringement proceedings. Many courts will, however, require the parties to attempt mediation or other alternative dispute resolution at some point in the proceedings, and which timing and requirement varies by jurisdiction.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are claims for trademark infringements heard before a general commercial Court or a specialist Court focused on Intellectual Property disputes? Are trademark infringement claims decided by a judge or by a jury?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In the United States, trademark infringement claims may be heard by federal district and state courts, which are general and non-specialized. They may be decided by a judge or a jury depending on the relief sought, other claims alleged and the preference of the parties. Under certain circumstances, trademark infringement claims may also be heard by specialized federal government agencies such as the International Trade Commission, which is focused on preventing the importation of infringing goods. The Trademark Trial and Appeal Board (\u201cTTAB\u201d) of the United States Patent &amp; Trademark Office (\u201cUSPTO\u201d) also decides trademark disputes related solely to registration\u2014not infringement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is there a time limit for commencing trademark infringement proceedings once the facts giving rise to the infringement are known to the trademark owner. After how long would such a claim be time-barred? What action would a trade mark owner have to know to give rise to such a claim being time-barred (for example, is it knowing that a mark in question is in use or is it knowing that a trade mark application has been filed and\/or registered?)<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The Lanham Act, which is the U.S. federal trademark statute, does not impose a statute of limitations for trademark claims. However, a defendant may raise an equitable defense of laches to bar some or all of the relief requested by a trademark owner. To prevail on a laches defense, a defendant must prove that the trademark owner unreasonably delayed in enforcing its rights and the delay caused prejudice to the defendant. In evaluating whether there was unreasonable delay, courts often look to the limitations period in analogous state laws, such as unfair competition or fraud. These analogous state laws vary by jurisdiction, but typically have anywhere from a 2-6 year limitations period which would then be sufficient to establish unreasonable delay for purposes of proving laches. This period would commence when the trademark owner knew or reasonably should have known of the infringing activity, and in some instances, such delay may be excused if, for example, the parties are engaged in pre-litigation settlement discussions or if the trademark owner waits to file suit until the defendant is offering more directly competitive goods or services under the theory of progressive encroachment.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction does the law protect unregistered trademarks of any kind, including by way of passing off, unfair competition or protection of trade dress. What are the criteria for their subsistence?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes. In the United States, enforceable trademark rights derive from use; federal registration is not required. As a result, trademark owners can bring trademark infringement and dilution as well as unfair competition claims based on their prior use of unregistered, or common law, trademarks. Unlike federally-registered marks which enjoy nationwide priority, however, common law trademark rights are limited to the geographic areas in which they are used. They also do not enjoy the same presumptions, including of validity, distinctiveness, and non-functionality as registered marks.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction will the Court hear claims for registered trademark infringement in parallel with claims for passing off,unfair competition, infringement of trade dress or other misleading advertising, or does a claimant need to bring such claims in a separate cause of action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Claims for registered trademark infringement are frequently brought in parallel with claims for unfair competition, common law trademark infringement, and\/or false advertising. Under U.S. law, there is a general requirement that all claims relating to a common set of operative facts be brought at once, or they may be considered waived (e.g., if the same advertisement contains trademark infringement and false advertising, courts will disfavor the bringing of two separate actions for each of these claims \u2013 especially if one is filed long after the other). As such, parties should bring all such claims together.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, do your Courts share jurisdiction with your Trade Mark Office, such that parties need to seek to seize the forum they prefer first in time, or does the Court take precedence and intervene to stay or transfer any live Registry proceedings (for example relating to invalidity or revocation of registered trade mark) which may overlap with an issued infringement claim and related counterclaim?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In general, U.S. courts have concurrent jurisdiction with the TTAB, and proceedings before both may proceed simultaneously. Neither tribunal can \u201cseize\u201d jurisdiction from the other. As a practical matter, however, one or both parties will often\u2014though not always\u2014seek to stay the proceedings in one forum pending conclusion of the other. The TTAB is more likely to suspend its proceeding pending the outcome of a court proceeding then vice versa.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Where the defendant has a counterclaim for invalidity or cancellation of the registered trademark being asserted against it (either on the basis of earlier rights or as a result of non-use by the trademark proprietor), does the counterclaim become part of the infringement action, so that both issues are heard by the same Court within a single action, with the Court making a determination at its conclusion, or are the validity issues bifurcated and heard in separate parallel proceedings? If in your jurisdiction validity issues are bifurcated, what are the practical consequences of this from a timing perspective? For example, does this mean that a Court will stay the infringement claim and proceed with the validity attack first to avoid finding a trademark infringed, only to have a separate Court find the trademark invalid at a later date?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Counterclaims for cancellation or invalidity of an asserted trademark are part of the infringement action; they are heard by the same court, in the same proceeding as the infringement claims. One exception to this is Section 337 proceedings before the International Trade Commission, where counterclaims are generally removed to a federal district court, but the invalidity challenge may still be raised in the same proceeding as an affirmative defense. Separate from or in addition to counterclaims, a defendant may also elect to pursue a parallel cancellation or opposition proceeding against the asserted trademarks before the TTAB. Such proceedings are often stayed pending resolution of the court proceedings.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, does a defendant have a defence of using a mark honestly and concurrently available to them?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>There are various circumstances under which a defendant may have a valid defence to its use of a trademark based on prior, good faith use in a particular territory. Typically, in order to prevail on such a defence, the trademark defendant must show that 1) it used the mark in a particular territory prior to a trademark owner\u2019s date of filing a trademark application and 2) acquired common law rights in that particular territory as a result of its use of the mark prior to the trademark registrant using the mark in that same territory. Similarly, if there are only common law rights at issue, the trademark defendant would only have to prove the latter as a defence.<\/p>\n<p>Concurrent use proceedings are also available at the USPTO to allow simultaneous registration by two parties of otherwise conflicting marks which are territorially separated. In order to obtain a concurrent use registration, the applicant must state, to the best of its knowledge, the extent of the concurrent use by others, any registrations or applications filed by such other persons, the goods on which such use is made, and the time periods of use. The applicant for a concurrent use registration must also state the area, goods and mode of use of the mark for which it seeks registration. The burden of demonstrating that confusion is not likely to result falls upon the applicant for the concurrent use registration.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">When considering the validity of a registered trade mark, does the Court consider whether the trade mark has been registered in bad faith? If so, what actions would indicate this bad faith?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Challenges of validity based on bad faith application or registration are likely to arise in the context of a claim for fraud on the USPTO brought through an opposition or cancellation proceeding before the TTAB, or through a claim for cancellation brought in the course of a court proceeding. Specifically, the tribunal may consider the intent of a registrant in assessing whether a registration was applied-for, obtained or maintained through fraud on the USPTO, including where the registrant did not have a bona fide intent to use the mark in commerce in the United States, or where other false statements or material omissions were made.<br \/>\nThe party asserting the claim of fraud bears a heavy burden of proof to demonstrate such fraud by clear and convincing evidence. 15 U.S.C. \u00a7 1064(3). Fraud claims require that the following elements be alleged and proved: 1) the challenged statement or omission was a false representation regarding a material fact; 2) the person making the representation knew that the representation was false (\u201cscienter\u201d); 3) an intent to deceive the USPTO by the registrant; 4) reasonable reliance on the misrepresentation; and 5) damage proximately resulting from such reliance. 4 McCarthy on Trademarks and Unfair Competition \u00a7 31:61 (5th ed.). Subjective intent to deceive by the registrant is an indispensable element of fraud. Id. Honest but inaccurate statements to the USPTO are not considered bad faith and are not sufficient to satisfy the intent to deceive standards if the registrant had a good faith, reasonable basis for such statements. However, making knowingly false statements or omissions to the USPTO with the intent to obtain a registration as a result would constitute the required scienter and intent to deceive by the registrant to support a fraud claim and attack the validity of the associated registration.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">If the main objective in commencing infringement proceedings is to secure an injunction, is a claimant required to state how much their claim is worth at the point their claim is issued?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A plaintiff is not required to seek monetary damages in connection with infringement claims, and need not specify the amount of any damages demand at the outset of litigation. Where monetary damages are sought, however, even if injunctive relief is the primary objective, a general damages demand should be made in the complaint. The specific amount sought, however, is often not determined until later in the litigation, and often in connection with fact discovery and expert disclosures. This is particularly the case as disgorgement of the defendant\u2019s profits is a common framework for damages recovery in trademark cases and that information cannot often be discerned until after receiving discovery from the defendant.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it possible to seek a preliminary injunction in your jurisdiction? If so, what is the criteria a trademark owner needs to establish and is there a bond or other undertaking in damages payable to compensate the defendant if the Court finds no infringement following a substantive hearing?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes. It is possible to seek a preliminary injunction in the United States. A party seeking a preliminary injunction must establish that (1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm in the absence of preliminary relief, (3) the balance of equities tips in its favor, and (4) an injunction is in the public interest. With respect to the second factor, if a trademark owner fails to move quickly after discovering the infringement, this would suggest that the harm is not irreparable and would significantly impair the ability to obtain such preliminary relief. This is a high burden, as a preliminary injunction is an \u201cextraordinary\u201d equitable remedy that is never awarded as of right. A party that obtains a preliminary injunction may often, but not always, be required to post a bond to compensate the enjoined party should a contrary judgment ultimately issue.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is a licensee (whether exclusive or non-exclusive) of a registered trademark entitled to commence proceedings for trademark infringement? Does the trademark proprietor need to be joined as a party to the proceedings, and does it have an effect whether the licensee is registered before the local Trademark Registry?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The question of standing to bring trademark infringement claims is highly fact-dependant, and will vary across jurisdictions.\u00a0 In some instances, only the registrant \u2013 that is, the owner of the trademark registration for the mark \u2013 may have standing to sue for infringement of that registration. \u00a0In other instances, an exclusive licensee may have standing to sue under the Lanham Act, but non-exclusive licensees may not.\u00a0 In still other circumstances, even a non-exclusive licensee may be able to bring an infringement claim.\u00a0\u00a0 The law also varies as to the implications of contractual provisions surrounding the right to bring suit, with some courts requiring such right to be affirmatively granted, and others finding such right in the absence of explicit restrictions to the contrary.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Where the claim for trademark infringement is premised on similarity between the defendant\u2019s mark and the trademark owner\u2019s registered mark, does the proprietor need to demonstrate that confusion has occurred or simply that there is a risk of confusion? What is the minimum standard required to secure a finding of infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The standard for trademark infringement in the United States is likelihood of confusion. While evidence of actual confusion is not required, it is widely considered to be the best evidence of likelihood of confusion, and even few instances of actual confusion can weigh heavily in a trademark owner\u2019s favor. Likelihood of confusion is also often measured through the use of consumer surveys conducted by expert witnesses. While there is no universally-applied minimum survey result required, some courts consider net findings above 15% to be probative of a likelihood of confusion and below 10% as probative of no likelihood of confusion.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction is it possible to rely on post-sale confusion as a means of securing a finding of trade mark infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes, post-sale confusion has been acknowledged as a viable basis for trademark infringement in US jurisdictions, although the various US circuits differ as to whether additional proofs are required, such as evidence that the allegedly infringing goods are inferior in quality to those of the trademark owner\u2019s, such that use of the infringing mark damages the reputation of the trademark owner. Considerations of whether the infringing use is otherwise harmful to the trademark owner, including by diminishing the exclusivity of the brand, may also be considered.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction what type of disclosure or discovery is typically ordered by the Court in respect of trademark infringement actions from both parties?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Disclosures and discovery are not \u201cordered\u201d by a court, per se.<\/p>\n<p>The parties are required to exchange initial disclosures under the rules of civil procedure, which itemize: (i) names and contact information of individuals likely to have discoverable information that the disclosing party may use to support its claims or defenses; (ii) copies and\/or descriptions of documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses; (iii) a computation of each category of damages claimed by the disclosing party; and (iv) any insurance agreement under which an insurance business may be liable to satisfy all or part of a possible judgment in the action or to indemnify or reimburse for payments made to satisfy the judgment.<\/p>\n<p>Beyond initial disclosures, the parties serve discovery requests and these requests impose an obligation to respond. \u00a0In trademark cases, these discovery requests generally include: (i) requests for the production of documents, electronically stored information, and tangible things, or for entering onto land, for inspection and other purposes; (ii) interrogatories (i.e., written questions answered under oath); (iii) requests for admissions; and (iv) depositions \u2013 both oral and\/or on written questions \u2013 of corporate witnesses and\/or individual fact witnesses.\u00a0 ESI discovery, which typically involves the collection, search and production of email and other electronic files is also common.\u00a0 Discovery may be served on parties to the case as well as third parties.<\/p>\n<p>In addition to the above factual discovery, expert discovery is also commonplace in the United States, and encompasses the exchange of opening and rebuttal expert reports and disclosures as well as associated depositions.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What type of expert evidence is permitted by the Court in your jurisdiction? Does the Court accept consumer surveys and are there specific rules about how consumer surveys are conducted. Do the parties need to request prior permission from the Court to adduce survey evidence?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Expert testimony is permitted in the United States to the extent the expert is deemed qualified, her opinion is based on reliable principles and methods, and her testimony is helpful to the trier of fact. Common expert evidence admitted in trademark infringement cases includes testimony by damages experts as well as consumer survey experts.\u00a0 Consumer surveys may be conducted on a variety of issues relevant to trademark and unfair competition claims, including likelihood of confusion, secondary meaning, genericness, fame and false advertising, and parties may engage more than one survey expert in any given case. \u00a0The specific requirements for the proper design of consumer surveys depend on the type of survey employed and the question the survey seeks to test.\u00a0 Additional experts may provide opinions on the relevant industry, including consumers, marketing channels and other channels of trade as well as issues concerning functionality, particularly where trade dress rights are implicated.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Does evidence submitted by your client in trademark infringement proceedings have to be accompanied with a statement of truth or other similar declaration?  Which party is typically responsible for signing the statement of truth (or similar), the entity itself or the entity's representatives?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>To be admitted for consideration by the court at trial, and while some categories of evidence are deemed self-authenticating or otherwise authenticated by alternate means, evidence must generally be authenticated by the witness through whom it is introduced.\u00a0 Evidence submitted prior to trial, including in connection with briefing, is often authenticated through declarations.\u00a0 Evidence in the form of declarations must contain a statement that the declaration is made under penalty of perjury pursuant to 27 U.S.C. \u00a7 1746.\u00a0 Further, declarations should contain statements to the effect that the witness is over the age of eighteen, he or she is competent to make the declaration, and that the witness has knowledge of the facts asserted therein and would be competent to testify to them under oath.<\/p>\n<p>Under Federal Rule of Civil Procedure 33(b)(5), certain discovery responses, namely interrogatory responses, must also be verified by the party.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction is it possible for a claimant to seek summary judgment and\/or strike out of an infringement claim? What are the legal criteria for a Court to grant summary judgment?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes. \u00a0It is possible to seek summary judgment on a trademark infringement claim. \u00a0To prevail, the movant must show that there is no genuine dispute as to any material fact such that the movant is entitled to judgment as a matter of law. \u00a0It is possible to move for summary judgment both on trademark claims in their entirety, as well as for partial summary judgment on specific issues and which may narrow the issues to be decided at trial.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How long does it typically take to reach judgment in a trademark infringement action from issue of the claim, through to first instance decision? What is the lower and upper range of legal costs for such an action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The length and costs associated with a trademark infringement suit can vary greatly depending on a number of factors, including the number of claims, the choice of forum, the breadth of discovery and the nature and extent of the parties\u2019 motion practice.\u00a0 Further, the majority of trademark infringement actions settle prior to trial. \u00a0However, on average from filing, including trial, through to first decision, a trademark infringement suit in the United States may cost several million dollars, and takes 2-3 years. \u00a0Early resolution, whether by settlement or a dispositive motion can significantly compress time frames and lower costs.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Following a first instance decision, is it possible for either party to appeal the decision? What are the grounds upon which an appeal can be lodged? Is it necessary to request permission to appeal, or are appeals automatically permissible? If either party file an appeal, is the enforcement of the first instance decision stayed pending the outcome of the appeal?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes, it is possible for either party to appeal a final judgment of the court, provided that it has grounds to do so. Interlocutory appeals of intermediate decisions \u2013 for example preliminary injunctions, may also be available. While grounds for appeal may vary depending on the jurisdiction, the most common grounds for appeal in trademark infringement actions include errors of law and abuse of discretion by the trial court.<\/p>\n<p>In federal court, an appeal is instituted by filing a notice of appeal, which, in civil cases, must be filed with the district court clerk within thirty (30) days of the entry of judgment or order being appealed. \u00a0In a civil case, the filing of an appeal does not automatically stay or prevent the enforcement of the lower court\u2019s judgment. \u00a0However, the appealing party can seek such stay through the proposal of a supersedeas bond. \u00a0This bond, if approved, may stay further action on the judgment until the appeal is over by guaranteeing that the appealing party will pay or perform the judgment if it is not reversed on appeal.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">If the parties have been involved in a dispute before the local Trademark Office, what relevance does this have on later infringement proceedings? For example where trademark owner (A) may have already sought to oppose the registration of a third party (B\u2019s) mark in proceedings before the local Trade Mark Office, is the trademark owner estopped from seeking invalidity of a registered trade mark where its opposition failed where the invalidity action is based on the same grounds as the unsuccessful opposition?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A prior decision of the TTAB can, but does not always or automatically, have preclusive effect in a later suit in federal court.\u00a0 The U.S. Supreme Court has explained that TTAB decisions are entitled to such preclusive effect only where 1) other elements of issue preclusion are met; 2) the TTAB considered the actual marketplace use of the mark (and did not, for example, limit its inquiry to the registration or application at issue); and 3) the actual marketplace use is \u201cmaterially the same\u201d as that covered by the relevant registration \/ application.<\/p>\n<p>With respect to issue preclusion, courts generally require that 1) the TTAB decision be final and not subject to appeal; 2) the issue before the court be identical to that decided by the TTAB; 3) such issue was actually litigated and contested in the TTAB proceeding, and necessary to the decision of the TTAB; and 4) applying a preclusive effect to that decision would not result in unfairness.\u00a0 Further, the standard for material similarity between use and registration is not fully settled, \u00a0and is often the subject of dispute.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, does the Court consider both liability and quantum within the same proceeding, or will any damages be assessed after the Court has reached a decision on liability? How are damages for trademark infringement proceedings typically assessed in your jurisdiction?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Both liability and the measure of damages are generally decided by the Court in the same proceeding, although the Court may, in certain circumstances, bifurcate these issues.\u00a0 Potential measures of damages for trademark infringement may include:<\/p>\n<ul>\n<li>Disgorgement of the infringer\u2019s profits attributable to the infringing activities;<\/li>\n<li>An award of the trademark owner\u2019s actual commercial damages and losses caused by the infringement, including for example lost profits;<\/li>\n<li>The cost of corrective advertising needed to counteract the confusion and deception caused by the infringement; and\/or<\/li>\n<li>Possible punitive damages in the form of treble damages or attorneys\u2019 fees in the event of bad faith, wilful infringement, or especially egregious litigation conduct by the defendant.<\/li>\n<\/ul>\n<p>Damages are not automatically awarded upon a finding of trademark infringement.\u00a0 While each of the above categories of damages are potentially recoverable, the most commonly pursued theory is disgorgement of profits, with treble damages and attorneys\u2019 fees only available in exceptional cases.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In addition to an injunction and damages, what other remedies are available in your jurisdiction?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In addition to injunctive relief and monetary damages, courts can also award a prevailing party its costs, including costs with respect to service of process, printing and photocopying fees, phone bills, clerk and docket fees, fees for printed or electronically recorded transcripts necessarily obtained for use in the case, compensation for interpreters, compensation for court-appointed experts, and compensation for translation fees.\u00a0 A court can, under certain circumstances, also award prejudgment interest which is intended to compensate the plaintiff for the loss of the use of the funds it would have otherwise had, but for the wrongful conduct of the defendant.\u00a0 In exceptional cases, courts can award the prevailing party is attorneys\u2019 fees.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Following a decision on the merits, is the winner entitled to recover all or a portion of its legal costs incurred in bringing or defending the proceedings. If legal costs are recoverable, what is the procedure involved and how does the Court assess the level of legal costs which should be reimbursed by the losing party.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In most proceedings, each party will bear its own attorneys\u2019 fees.\u00a0 However, attorneys\u2019 fees are available in \u201cexceptional cases\u201d involving trademark infringement claims.\u00a0 See Octane Fitness, LLC v. ICON Health &amp; Fitness, Inc., 572 U.S. 545, 134 S. Ct. 1749, 1756, 188 L. Ed. 2d 816, 110 U.S.P.Q.2d 1337 (2014).\u00a0 The Octane rule permits a case to be deemed \u201cexceptional\u201d if it \u201cstands out from others with respect to the substantive strength of a party\u2019s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.\u201d\u00a0 In that case, the U.S. Supreme Court held that the statutory language authorizing discretionary attorney fees to the prevailing party in \u201cexceptional cases\u201d allows a district court to determine if a case is \u201cexceptional\u201d on a case-by-case basis, not by use of a rigid set of criteria.\u00a0 Thus, what qualifies as \u201cexceptional\u201d also varies from federal circuit to federal circuit.<\/p>\n<p>In order to obtain an award of attorneys\u2019 fees, and while procedure may vary somewhat by Court, the prevailing party must typically file a Motion for Attorneys\u2019 Fees and Costs no later than 14 days after the entry of judgment.\u00a0 The Motion must typically specify the judgment and the statute, rule or ground entitling the movant to the award, as well as the amount sought or a fair estimate thereof.\u00a0 The Court will then analyze whether the case should be considered \u201cexceptional\u201d so as to justify an award of attorneys\u2019 fees, and if so, whether the requested attorneys\u2019 fees are \u201creasonable.\u201d\u00a0 The party seeking attorneys\u2019 fees bears the burden of proving the request is reasonable and must submit evidence to support the hours worked and rates claimed.\u00a0 Expert testimony on the subject of reasonableness may also be submitted.\u00a0 The starting point for determining what attorneys\u2019 fees are reasonable in any case is to calculate a \u201clodestar\u201d amount; \u201cthat is, the number of hours reasonably expended multiplied by a reasonable hourly rate.\u201d\u00a0 The lodestar formula is presumed to yield a reasonable attorneys\u2019 fee which is adequate to attract competent counsel, but which does not produce a windfall to attorneys.\u00a0 Courts, however, have great discretion in deciding what reasonable attorneys\u2019 fees are in a given case, and which may vary by jurisdiction and claims implicated.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Once the Court has issued a judgment, how long typically does the losing party have to comply with the Court\u2019s judgment including any final injunction issued? What are the consequences for failing to comply and how would the winning party seek enforcement of its judgement.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The deadline for compliance with judgment entered in trademark infringement proceedings, including injunctive relief or payment of damages, is typically set by Court order or otherwise governed by local rules.<\/p>\n<p>If a party fails to comply with the terms of a judgment there can be severe legal repercussions, including contempt of court, which may entail fines or other court-mandated sanctions.\u00a0 To enforce a judgment in the face of non-compliance, the enforcing party will generally need to file a motion for such enforcement with the issuing court.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\r\n<div class=\"word-count-hidden\" style=\"display:none;\">Estimated word count: <span class=\"word-count\">5515<\/span><\/div>\r\n\r\n\t\t\t<\/ol>\r\n\r\n<script type=\"text\/javascript\" src=\"\/wp-content\/themes\/twentyseventeen\/src\/jquery\/components\/filter-guides.js\" async><\/script><\/div>"}},"_links":{"self":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide\/137670","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide"}],"about":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/types\/comparative_guide"}],"wp:attachment":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/media?parent=137670"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}