This treatise provides trademark owners and their counsel the guidance they need to effectively defend and protect their brands and maintain the value of trademarks. It covers all aspects of trademark rights, liabilities, and remedies, as well as the civil infringement remedies available today in federal and state courts, and provides keen insight from expert practitioners. The Third Edition discusses necessary elements in establishing liability for trademark and unfair competition; principles for equitable relief and the impact of bad faith on a practitioner’s case; issuance of preliminary and permanent injunctions; wrongful seizure of another’s goods occurring in the area of “extraordinary” relief; attorneys’ fees; availability of special enforcement remedies; relief and remedies under state law for infringement and unfair competition; and special relief available in counterfeiting cases.
SUPPLEMENT INFORMATION
The 2018 Supplement includes the following:
- The Fifth Circuit held in Viacom Int’l, Inc. v. IJR Capital Investments that even a fictional use of a trademark (in this case The Krusty Krab) can create trademark rights so long as the fictional mark at issue serves as an indication of origin
- After the Third Circuit’s decision in the Groupe SEB case that typical likelihood of confusion evidence may support an inference that irreparable injury is likely, a district court in that circuit in Rann Pharmacy, Inc. v. Shree Navdurga LLC denied a motion for preliminary injunction solely based on the irreparable injury requirement
- The Ninth Circuit in Adidas Am., Inc. v. Skechers USA, Inc. affirmed a finding of irreparable harm based on evidence of likely harm to reputation and goodwill
- In Stone Creek, Inc. v. Omnia Italian Design, Inc., the Ninth Circuit affirmed the willfulness requirement as a prerequisite for awarding a defendant’s profits and expressly endorsed the Federal Circuit’s view that the 1999 amendment did not affect prior precedent
- A federal district court in New York in Innovation Ventures, LLC v. Ultimate One Distrib. Corp. found an award of attorneys’ fees appropriate based on the threat to public safety presented by defendants’ conduct
- A new topic discusses the EU General Data Protection Regulation (“GDPR”), effective May 25, 2018
- A new topic reviews the applicability of “the server test” to trademark infringement
Summary of Contents
Part I. Introduction
Chapter 1. The Origins of Trademark Rights and the Nature of the Interests Protected
Chapter 2. Establishing Trademark and Unfair Competition Liability
Part II. Injunctive Relief
Chapter 3. General Principles
Chapter 4. Preliminary Injunctions
Chapter 5. Permanent Injunctions
Chapter 6. Extraordinary Circumstances and Relief
Part III. Monetary Relief
Chapter 7. Defendant’s Profits
Chapter 8. Plaintiff’s Damages
Part IV. Miscellaneous Civil Remedies
Chapter 9. Attorneys’ Fees
Chapter 10. Special Enforcement Remedies
Chapter 11. State Law Remedies for Trademark Infringement and Unfair Competition
Chapter 12. Special Remedies for Counterfeit
Chapter 13. Remedies for Trademark Infringement and Unfair Competition on the Internet
Table of Contents • Index
About the Editor-in-Chief
Steve Meleen is Managing Member of Pirkey Barber PLLC, Austin, TX. He has specialized in trademark law with Arnold White & Durkee since 1996.