Trademark Litigation

Trademark litigation usually is initiated by filing suit for infringement under 15 U.S.C. § 1114 (Infringement) and/or 15 U.S.C. 1125 (False designation of origin) in federal court.  The suit may be based upon a registered trademark or one at common law.  A federal trademark registration provides the legal presumptions that (1) the mark is a trademark, (2) the trademark is owned by the registrant, and (3) the trademark owner may use the mark throughout the United States to the exclusion of essentially all others.  The remedies sought include (1) a preliminary injunction, (2) damages, and (3) a permanent injunction.  The defendant may request cancellation of the mark for any of the reasons that would be available in a cancellation before the Trademark Trial and Appeal Board.  A jury is available, if requested. The damages may include not only compensatory damages, but also an amount for corrective advertising.  Any appeal is to the regional circuit court of appeals.

The Supreme Court’s recent B&B Hardware, Inc. v. Hargis Industries, Inc., decision has altered trademark litigation because a decision of the Trademark Trial and Appeal Board in an underlying cancellation or opposition now is entitled to preclusive effect in related federal trademark litigation on the issue of likelihood of confusion. 

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