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Blog

"Laying the Litigation Groundwork: A US Perspective" - World Trademark Review

February 10, 2016

Blog

"Laying the Litigation Groundwork: A US Perspective" - World Trademark Review

February 10, 2016

Back to Fish's Trademark and Copyright Blog

 

Fish’s David Hosp was featured in a recent World Trademark Review blog post by Trevor Little, Editor, promoting the upcoming Trademark Litigation: Practical Strategies conference in New York on April 21, 2016.

The preliminary injunction is a critical tool in the litigator’s armoury, with David Hosp, a principal and trial lawyer at Fish & Richardson, observing that “as a practical matter, as often as not, trademark cases are decided at the preliminary injunction phase. If a preliminary injunction is granted, the defendant must cease using the mark in question pending a trial that may not take place for a year or more later, and the practicalities of re-launching a dormant brand at that point (assuming the defence is ultimately successful) are not necessarily attractive”.

While this can make preliminary injunctions a priority, their utilization is complicated by the changing judicial treatment of irreparable harm. For many years such harm was presumed in cases in which a rights holder could establish a likelihood of success on trademark infringement claims. However, in 2013 the US Court of Appeals for the Ninth Circuit weighed in on the applicability of the Supreme Court’s patent-based ruling in eBay Inc v MercExchange to preliminary injunctions in the trademark context.

This increased the stakes for plaintiffs, with Hosp noting that, “because damages can often be difficult to prove, if the preliminary injunction is denied, plaintiffs can lose the will to fight and may be far more willing to come to some compromise settlement”. Again, then, a thoughtful approach to preparation is key. He adds: “Significant thought must be given to the evidence that a plaintiff (or a defendant) can offer on key issues of trademark validity, ownership, and likelihood of confusion even before the complaint has been filed or discovery has begun. Evidence of consumer surveys and actual confusion should be gathered even before filing, and thought should be given to what requests for expedited discovery will be needed to succeed at this initial stage because, notwithstanding the ‘preliminary’ label, this phase can often determine the ultimate success or failure of the case for the client”.

Read the full post from World Trademark Review here.

WTR TM Litigation 2016

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Blog Authors

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R. David Hosp | Principal

David is a Principal and trial lawyer in the Boston and New York offices of Fish & Richardson P.C., where he specializes in media, copyright and trademark litigation. In his twenty-year legal career, he has represented prominent clients including The New York Times,...

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