Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
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Results: 4 Answers
Trademarks
7.
Enforcement and remedies for trademark infringement
7.1
What remedies are available against trademark infringement?
 
United States
Section 32 of the Lanham Act (15 USC §1114) provides a cause of action for infringement of a registered trademark; while Section 43(a) of the Lanham Act (15 USC §1125(a)) provides a similar cause of action for uses of designations that are likely to cause confusion with registered or unregistered marks. Under Section 35 of the Lanham Act (15 USC §1117), remedies for violations of either of these sections include:

  • injunctive relief;
  • seizure and destruction of infringing articles;
  • disgorgement of the infringer’s profits; and
  • recovery of the plaintiff’s damages, costs and, in ‘exceptional cases’, reasonable attorneys’ fees.

Some courts hold that a plaintiff must prove that the defendant was a wilful infringer (ie, intended to trade off the goodwill of the plaintiff’s mark), or that there was actual confusion, in order to recover monetary relief. Section 35 provides for treble damages for the use of a counterfeit mark.

For more information about this answer please contact: John Crittenden from Cooley LLP
7.2
What remedies are available against trademark dilution?
 
United States
Under Section 43(c) of the Lanham Act (15 USC §1125(c)), the remedy for trademark dilution is an injunction, but a plaintiff that proves wilful violation of this section may recover monetary relief available under Section 35, as discussed in question 7.1.

For more information about this answer please contact: John Crittenden from Cooley LLP
7.3
Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
 
United States
The Lanham Act provides for various other remedies, such as a cause of action under Section 38 (15 USC §1120) against anyone that procured a registration by fraud. Section 42 of the act (15 USC §1124) prohibits the importation of goods bearing infringing marks.

For more information about this answer please contact: John Crittenden from Cooley LLP
7.4
What is the procedure for pursuing claims for trademark infringement?
 
United States
The trademark owner must bring a civil action in court. Most often, those actions are brought in a US district court, which is the court of first instance in the US federal system. Each US state or territory has one or more district courts covering a defined region. Where the parties are citizens of the same US state and the plaintiff alleges violations of state law only, the action may be brought in state court. The federal and state judicial systems are separate.

For more information about this answer please contact: John Crittenden from Cooley LLP
7.5
What typical defences are available to a defendant in trademark litigation?
 
United States
Typical defences in a trademark action in the United States include:

  • descriptive fair use (ie, use not as a mark, but to describe one’s goods or services or qualities thereof);
  • nominative fair use (ie, use of the plaintiff’s mark to refer to the plaintiff);
  • laches (ie, unjustifiable delay);
  • unclean hands;
  • trademark misuse (eg, use of a trademark to restrain trade);
  • that the plaintiff obtained its registration by fraud on the US Patent and Trademark Office; and
  • that the use is protected by the guarantee of free speech under the First Amendment to the US Constitution.
For more information about this answer please contact: John Crittenden from Cooley LLP
7.6
What is the procedure for appealing a decision in trademark litigation?
 
United States
A party dissatisfied with a judgment of a federal district court or a state trial court can appeal it to, respectively, the US court of appeals for the regional circuit in which the case was heard or the state appellate court. There are 12 regional circuit courts of appeals. Generally, only a final judgment can be appealed, but certain interlocutory decisions (eg, grant or denial of a preliminary injunction) can also be appealed.

For more information about this answer please contact: John Crittenden from Cooley LLP
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