Trademark Litigation: Pre-Suit Toolkit

Resources to assist a trademark owner's counsel in evaluating and preparing to commence trademark litigation in federal district court under the Lanham Act.  

Practical Law Intellectual Property & Technology

A company's trademarks ( www.practicallaw.com/4-501-4858) are often among its most valuable assets. Given the business and competitive importance of trademarks, companies should be prepared to take appropriate enforcement action against third-party infringers. Proper trademark enforcement includes a variety of measures. In cases where the existing or threatened trademark violation is serious, commencing litigation in federal district court under the Lanham Act ( www.practicallaw.com/8-501-4903) may be the most appropriate course of action to protect the company's trademark rights. However, litigation can be a time-consuming and expensive process and should not be undertaken lightly. Before advising a client to pursue litigation, counsel must carefully evaluate many factors, including:

  • The merits of the client's potential claims and the alleged infringer's potential defenses.

  • The cost of litigation.

  • The suitability of non-judicial forums.

  • The need for immediate relief.

  • The client's prospects of collecting on a judgment.

  • The availability of alternative dispute resolution.

  • The advisability of sending a cease and desist letter.

  • Proper venue.

  • Subject matter jurisdiction.

  • Personal jurisdiction.

  • Local bar admission.

Once a company decides to litigate in federal court to protect its trademarks, counsel must prepare the complaint and other case initiating documents.

The Trademark Litigation: Pre-Suit Toolkit provides several continuously maintained resources designed to help trademark owner's counsel evaluate and prepare to initiate trademark litigation in federal district court under the Lanham Act, from running a conflicts check to drafting the complaint and other case initiating documents.

 

What to Consider First

 

Evaluating the Case

 

Setting the Stage

 

Initiating the Suit

 
{ "siteName" : "PLC", "objType" : "PLC_Doc_C", "objID" : "1247692546104", "objName" : "ACT_OWNED - READ_ONLY - 9-521-9777", "userID" : "2", "objUrl" : "http://us.practicallaw.com/cs/Satellite/us/resource/9-521-9777?null", "pageType" : "Resource", "academicUserID" : "", "contentAccessed" : "true", "analyticsPermCookie" : "25e8a493e:15afe7caf2f:-651", "analyticsSessionCookie" : "25e8a493e:15afe7caf2f:-650", "statisticSensorPath" : "http://analytics.practicallaw.com/sensor/statistic" }