Trademark Infringement: Remedies and Damages in the 2019 Landscape
The use of trademarks has become evidently valuable for businesses’ growth and success. Trademarks, which enable consumers to exclusively identify products and services, thus, preventing confusion in the market, can actually increase in value and can last forever. However, the widespread crossroad of trademark infringement cases is now inevitable. Trademark owners must be well prepared to protect and defend their trademarks against infringement.
In this LIVE Webcast, a seasoned panel of thought leaders and professionals brought together by The Knowledge Group will provide and present an in-depth analysis of the fundamentals as well as recent developments in recovering remedies and damages for an infringed trademark. Speakers will also present all important issues surrounding this significant topic.
Some of the major topics that will be covered in this course are:
- Trademark Infringement Remedies and Damages - Overview
- Best Practices to Recover Remedies
- Notable Court Rulings and Recent Developments
- Tips to Protect Trademarks
Thomas Dunlap, Partner
Dunlap Bennett & Ludwig PLLC
- Cybersquatting generally
- Protecting Domain Names as Trademarks
- Choice of forum: ACPA/ URDP (providers)
- Selective purchase of domain names by “domainers”
- Choosing a UDRP dispute provider
- The top-level domain
- Uniform Rapid Suspension System (URS)
- ccTLD Dispute Policies for Country-Code Top Level Domains (possibly-optional)
James Gale, Co-Chair, Intellectual Property Litigation
Brian M. Daniel, ASA, CFA, CLP, Vice President
Charles River Associates
- Overview of monetary relief available in Lanham Act matters
- Lost profits
- Defendant’s profits
- Enhanced damages
- Variety v. Walmart Case – decided February 19, 2019
- Trademark infringement of Backyard trademark on BBQ grills
- Reasonable royalty and disgorgement of profits
- Willfulness as a requirement for defendant’s profits
- Romag Fasteners, Inc. v. Fossil, Inc. et al.
- Circuits currently requiring willfulness
- Circuits considering willfulness as a factor
Steven J. Wadyka, Jr., Shareholder
Greenberg Traurig, LLP
- The issue of whether willfulness is a prerequisite to an award of defendant’s profits under Section 35(a) of the Lanham Act is currently before the U.S. Supreme Court.
- The petition for certiorari was fully briefed as of June 4, 2019. The Court will decide in the coming months whether it will hear the case.
- A key issue in dispute is whether the 1999 Amendment to Section 35(a) expressed Congress’s intent to require willfulness for an award of damages and profits for trademark dilution claims under Section 43(c) but not for trademark infringement claims under Section 43(a).
- Most courts have considered willfulness as at least a factor in determining whether to award profits.
- Knowledge of the plaintiff’s mark can in some cases be proof of willfulness but not always.
- Willfulness has been found based on the defendant’s continued use of its mark after receiving a USPTO refusal under Section 2(d) based on a likelihood of confusion with the plaintiff’s mark.
- Willfulness has also been found whether the defendant continued to use its mark after receiving a cease and desist demand from the plaintiff.
- The courts have also found willfulness where the defendant acted with willful blindness by, for example, failing to investigate the claims asserted by the plaintiff in a cease and desist letter.
- Failure by the defendant to conduct a trademark search does not alone establish willfulness.
- The multi-factor approach taken by those Circuits that do not view willfulness as a prerequisite to an award of profits will likely continue to be viable regardless of the outcome in Romag Fasteners.
Who Should Attend:
- Trademark Lawyers
- IP Attorneys & Consultants
- Brand Owners
- Brand Managers
- In-house Counsel
- Corporate Counsel
- Litigation Officers
- Other Related/Interested Professionals
Tom’s practice focuses on patent, trademark, trade secret, commercial, entertainment law, business and government contracts disputes, litigation and transactions. Tom has authored numerous books and appeared on national television and radio including Fox, Sundance TV, and NPR speaking a variety of subjects in his fields of practice. In addition to the state and Federal courts of DC, VA, and MD, he is a member of the Federal Courts in Puerto Rico, Colorado and Texas, as well as the Court of Federal Claims, the Federal Circuit, where he has recently argued and won three appellate matters), the Veteran’s Court of Appeals, and the United States Supreme Court, where he was lead counsel on a False Claims Act case (See United States ex rel. Carter v. Halliburton Co.) and in the TC Heartland LLC v. Kraft Foods Group Brands LLC, (U.S. May 22,. 2017) (No. 16-341) case involving jurisdiction in patent infringement cases. Other recent litigation victories where Tom served as lead trial counsel include a $12,317,500 verdict in Zuru v Telebanrds et al (EDTX 2017) (patent infringement), and a $2,600,000 verdict in DPX Gear v Prince et al (Loudoun Circuit Court 2017) (breach of contract & fraud).
Tom’s practice focuses on patent, trademark, trade secret, commercial, entertainment law, business and government contracts disputes, litigation and transactions. Tom …
James A. Gale focuses his practice in the area of intellectual property counseling and litigation. He is a registered patent attorney with over 33 years of experience and Martindale AV Preeminent© rated, Board Certified in Intellectual Property by the Florida Bar, an AAA Arbitrator and the former inaugural chair of the IP Board Certification Committee. Jim has represented clients in hundreds of cases involving patents, trademarks, copyrights, unfair competition, covenants not to compete, theft of trade secrets and internet disputes. He has appeared in over 400 federal cases in more than 48 Federal District and Circuit Courts, as well as handled hundreds of injunctions in over 35 different states around the nation.
James A. Gale focuses his practice in the area of intellectual property counseling and litigation. He is a registered patent …
Brian is a vice president of Charles River Associates in Chicago, and since 1995 he has managed litigation, valuation, and strategy assignments in a wide variety of manufacturing, retailing, and service industries. In the context of litigation, Brian has significant experience with trademark, patent, trade secret, copyright, and other matters involving accounting, finance, economics, marketing, and statistical issues. He has testified on matters including the determination of economic damages and monetary relief in deposition and in federal district court. He has tendered expert reports and performed extensive sales, profitability, and present value analyses to determine economic damages, including the calculation of lost profits, profit disgorgement, reasonable royalty, and prejudgment interest.
Brian is a vice president of Charles River Associates in Chicago, and since 1995 he has managed litigation, valuation, and …
Steven J. Wadyka Jr. focuses his practice on the protection, enforcement and defense of intellectual property rights. He has represented both plaintiffs and defendants in trademark infringement, copyright infringement, trade dress infringement, trademark dilution, false advertising, anti-counterfeiting and unfair competition litigation in federal courts throughout the United States. Steve serves as lead counsel in trademark, copyright and trade dress litigation, handling such matters as expedited injunction hearings, depositions and discovery, dispositive motions, jury and non-jury trials, and trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board. His clients include major multinational brand owners from a variety of industries, such as consumer products, financial services, footwear and apparel, furniture, toys and games, food and beverages, information technology, media, telecommunications, energy, sports and entertainment.
Steven J. Wadyka Jr. focuses his practice on the protection, enforcement and defense of intellectual property rights. He has represented …
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Method of Presentation:
General knowledge of trademark laws
NY Category of CLE Credit:
Areas of Professional Practice
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About Dunlap Bennett & Ludwig PLLC
Dunlap Bennett & Ludwig is a veteran-owned law firm with a global footprint including the United States, Puerto Rico, Toronto, London, and Beijing. Our team of more than 70 attorneys includes intellectual property lawyers who are also scientists, patent-holders, military veterans, commercial pilots, prosecutors, aerospace engineers, MBAs, and scholars. With more than 2,500 trademarks and almost 1,000 new patents filed each year and a 100% Federal Circuit win rate for six cases (2016-2018), Dunlap Bennett & Ludwig is the choice for business and entrepreneurs around the world.
About Cozen O'Connor
Established in 1970, Cozen O’Connor has more than 700 attorneys who help clients manage risk and make better business decisions. The firm counsels clients on their most sophisticated legal matters in all areas of the law, including litigation, corporate, and regulatory law. Representing a broad array of leading global corporations and middle market companies, Cozen O’Connor services its clients’ needs through 28 offices across two continents.
About Charles River Associates
Charles River Associates is a leading global consulting firm that offers economic, financial, and strategic expertise to major law firms, corporations, accounting firms, and governments around the world.
With proven skills in complex cases and exceptional strength in analytics, CRA consultants have provided astute guidance to clients in thousands of successful engagements. CRA offers litigation and regulatory support, business strategy and planning, market and demand forecasting, policy analysis, and risk management consulting services.
The firm’s success stems from the outstanding capabilities of its consultants, many of whom are recognized as experts in their respective fields; close relationships with a select group of respected academic and industry experts; and from a corporate philosophy that stresses interdisciplinary collaboration and responsive service.
Headquartered in Boston, the firm has offices throughout the world.
About Greenberg Traurig, LLP
Greenberg Traurig is a global law firm with approximately 2000 attorneys and governmental affairs professionals in 39 commercial and government centers across the United States and in Latin America, Europe, the Middle East, and Asia. Greenberg Traurig provides integrated, business-focused legal services for clients ranging from Fortune 500 corporations to innovative start-ups. The firm’s multidisciplinary teams include senior lawyers who have served as chief legal officers at major multinational companies and have spent years solving real-world problems in the business, political and legal arenas. For additional information, please visit www.gtlaw.com.