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What does the Manual for Complex Litigation say about Trademarks?

The Manual For Complex Litigation is the authority regarding trademarks


Trademark claims are governed by the Lanham Act.  A trademark is “any word, name, symbol or device” used to “identify and distinguish” goods. Trademarks identify the source or origin of a product. To be accorded protection, the trademark must be “distinctive” or have become identified with a particular source through its use in “commerce.”

The Lanham Act also covers service marks, which distinguish services of one person from another, and trade names. The protections offered by trademark law are less than those accorded copyright or patents.

For instance, unlike owners of patents or copyrights, trademark owners do not have exclusive use of a mark. Protection extends only to prevent the mark from being used by others in a manner likely to cause confusion, mistake, or deception among consumers as to the source of the goods or services.

Courts have applied a number of factors to assess whether an allegedly infringing use is likely to cause consumer confusion. These factors include the similarity of the marks, the similarity of the parties’ products and services, the strength of the plaintiff’s mark, evidence of actual consumer confusion, the markets involved, likelihood of confusion, and the sophistication of buyers.

Trademarks are valid and enforceable as long as the mark is used in commerce, the owner adequately seeks to protect its rights to the mark, and the mark has not been abandoned or become generic.

A mark need not be registered with the Patent and Trademark Office, although registration can be considered conclusive evidence of validity and ownership. Where the owner has met the incontestability requirements of section 1065 of the Lanham Act, an allegedly infringing defendant is limited to the defenses set forth in section 1115(b) of the Act.  In addition, a federal trademark registration also affords the owner nationwide rights, well beyond the local geographic market where the mark is used. This attribute of federal registration affords wider protection than state registration.

Many of the case-management considerations in a copyright case also apply to trademark cases. Similar issues arise relating to arbitrability, remedies sought, and the scope and issuance of protective orders. Motions for injunctive relief are common in trademark litigation and can be accompanied by requests for seizure of the allegedly infringing goods. The owner of a mark can also seek to freeze the assets of the defendant under certain circumstances. Damage to the goodwill associated with a trademark will usually meet the requirements for irreparable injury, and a showing of the likelihood of consumer confusion together with evidence of prior rights in the mark are significant factors in demonstrating a likelihood of success on the merits.

Technological advances also affect the application of trademark law. Infringement of trademarks in cyberspace complicate issues of origin, affiliation, or sponsorship, as well as the extent of protection accorded trademark use in metatags, hyperlinks, and caching. Other considerations include the following:

  • Is foreign commerce involved and extraterritorial jurisdiction sought?
  • Are the issues presented purely equitable or do they include distinct legal claims that will require a jury trial? For example, whether the plaintiff is entitled to money damages upon a finding of infringement is a jury question. Where the jury awards no damages, leaving only equitable issues, courts have considered whether the jury verdict may be treated as advisory and enter a contrary verdict.
  • Where the Internet forms the vehicle for the infringing activity, is the defendant subject to personal jurisdiction? Personal jurisdiction over nonresident owners of Web sites often turns on whether the site is active or passive.
  • If the action is in rem against an infringing domain name, has the plaintiff met the requirements to bring an in rem action pursuant to the Anticybersquatting Consumer Protection Act.
  • Has there been a request for expedited discovery?

Ms. Rhonda Harper, MBA

Retained by more than 125 law firms, Ms. Rhonda Harper is courtroom proven in virtually every circuit along with JAMS and TTAB.  Ms. Harper's 30 year career includes serving as a Fortune 100 chief marketing officer and an adjunct marketing professor. In addition to providing litigation consulting and research in the areas of business, licensing, marketing, advertising, and strategy, Ms. Harper is routinely retained to formulate expert surveys, conduct rebuttal critiques, or construct rebuttal surveys to show the potential difference in results with properly designed and executed surveys. She has extensive experience and a deep understanding of survey design, sampling, question construction, data analysis, and the methodological pitfalls that can introduce bias or systematic error.

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