Sunstein Trademark Litigation Strategy

Our trial attorneys use the winning combination of daily experience with trademark law and aggressive litigation advocacy to define the key theories of the case necessary to achieve our clients’ goals. As a matter of course, we think creatively, putting ourselves in the shoes of our adversaries, developing factual evidence in a novel way, and exploring important but often overlooked aspects of trademark law, all in furtherance of winning real and tangible victories in court and in settlement. In addition, the trademark rights of our technology-driven clients often depend on subtle distinctions between the technologies embodied in the products of our clients and their competitors. We put our technological depth to work for our clients in crafting winning trademark strategies.

Trademark cases have unique aspects that must be understood to achieve success. For example, the law entitles a trademark owner to seek preliminary relief, which if obtained, can end a case immediately by forcing a favorable settlement, and by forcing a defendant to immediately take the trademark owner’s claim seriously. We have sought preliminary injunctions in numerous cases and by doing so have drastically reduced the cost of litigation by settling the case before or after obtaining an injunction. Trademark law also provides for a permanent injunction, which compels parties to consider exactly what a particular litigation outcome will require of them. This, like the preliminary injunction, often acts as a catalyst for settlement, and we aggressively use this approach to obtain favorable results for our clients.

We turn the tables on our opponents. Our firm took over representation of a party during the discovery phase of a trademark battle between two banks that had been using their trademarks since 1853 and 1897, respectively. Our client was in a defensive position when we entered the case. Using a key provision of the Lanham Act, the federal trademark statute, that had not been addressed by the parties, we were able to take the offensive against the opponent, arguing that our client had superior rights and demanding that the opponent cease all use of the mark. We used the same statute to put the burden on our opponent to prove its lack of knowledge of our client in 1897, the factual linchpin of our legal theory. Finally, not resting on our procedural advantage, we engaged an economic historian who painstakingly analyzed the trade press of the late 19th century to prove that our opponent had to have known of our client in 1897, a proposition the court accepted at trial. After the trial and while on appeal, the case settled, after which our opponent ceased use of the offending mark.

We focus our theories to achieve the client’s goals. In a case involving a preeminent university and a locally prominent health care company, our university client was sued for a declaratory judgment that the health care company could continue to use, without control or oversight, the name of the much older university, as it had for over 30 years. We argued that an implied license governed the parties’ rights, and that the university retained control and oversight over the health care company’s use of the name. We extensively developed the factual record, and took the depositions of every living former president of the university and numerous persons involved in the formation of the health care company in the 1960s. We pressed infrequently litigated trademark principles to present a strong case that produced a settlement of the suit in which the health care company acknowledged our view that the university retained ownership rights in the mark as well as the right to oversee and control all uses of the name.

We strengthen our clients’ marks. Representing a renowned custom car designer and exclusive licensee of a famous mark for its cars, we forged an alliance with the owner of the mark, a major U.S. automobile manufacturer, to obtain an injunction against an infringer making knockoffs of our client’s distinctive car designs and using our client’s trademark. The infringer attempted to defend by claiming the mark and designs had been abandoned after 30 years of non-use, a charge we rebutted by relying on focused factual research (including promotional films found in the car manufacturer’s archives), strong survey evidence, and a strategy of making certain that the infringer understood we intended to press the case through trial. At trial, we obtained not only an injunction but also a declaratory judgment that the mark was valid and protectable, rebuffing all the infringer’s attacks. Our client went on to sell his business at a substantial premium, in no small part due to the rehabilitation of the trademark and designs, and the automobile manufacturer reintroduced the mark on a key model of its U.S. sports car lineup.

We use experts in creative ways. In another case we defended a national telecommunications company from charges of trademark infringement brought by an enterprise software concern. We engaged an MIT economist to analyze the differences between the products and markets of the litigants to show that use of the two trademarks did not confuse consumers as to the source of the products. We also engaged an expert to perform an internet survey whereby company executives in relevant markets were questioned about whether the two marks created confusion. As a result of our advocacy, the suit was dropped against our client.

We convince our opponents. We also used the Lanham Act to obtain extraordinary relief – including public retraction and a statement of regret – in a false advertising case for a client with an inventive device for preventing joint injuries. Our client’s competitor, which dominated the market for similar devices, engaged researchers at a major California research university to compare the two products and then advertised that the research tests proved the superiority of its device. Through our firm’s technology contacts, we engaged what even our adversary agreed is the leading expert in the field, who determined that the university study was fatally flawed. Well prior to the deadline for disclosing expert opinions, we used the expert opinion in a federal court mediation to stunning effect. In settlement of the case, our adversary withdrew its advertisements, and agreed to corrective advertising in which it disavowed the university study, identified our expert by name, and repeated his opinion that the university study “is not reliable and cannot sustain any of the claims” in previous advertising. The corrective advertisement apologized further, saying our adversary “expressly regrets” its comparison of the products, and asking consumers “to not use” or “rely on any statements” in the earlier advertising.

We apply a worldwide strategy. In numerous cases we have defended clients against trademark attacks in foreign jurisdictions. It is often the case that although our client may have junior rights in a particular country, it actually has superior rights in the U.S. or another country. We have frequently been able to leverage these superior rights against the adversary to force it to drop its suit in the original jurisdiction, because we have made the adversary realize that a win in that jurisdiction means a loss elsewhere. By treating our clients’ trademark rights as a whole package, rather than isolated assets, we can strengthen the portfolio and protect clients from piecemeal attacks.

If you have any questions about trademark litigation or would like to discuss the handling of trademark litigation in the context of your business, contact a member of our Litigation Practice Group.