2006 Spring, 18. Federal Court Practice: Prosecuting Trademark Infringement & ECF.

AuthorBar Journal Author - Attorney Timothy J. Ervin

New Hampshire Bar Journal

2006.

2006 Spring, 18.

Federal Court Practice: Prosecuting Trademark Infringement & ECF

New Hampshire Bar Journal Volume 47, No. 1, Pg. 18 Spring 2006 Federal Court Practice: Prosecuting Trademark Infringement & ECF Bar Journal Author - Attorney Timothy J. Ervin Introduction

How do you protect a client's valuable trademark rights against infringement in today's global marketplace? If you think the hardest part is clearing a trademark for use, think again. Just as important as securing rights to use intellectual property is the ability to protect those rights against infringement. With the advent of the internet, trademark, copyright, patent, and publicity right holders face the daunting task of policing and protecting their intellectual property rights from the near daily assault of would-be infringers. While some major internet host sites such as eBay have developed programs specifically designed to address infringement,1 these programs, in and of themselves, do little to protect the intellectual property right holder.

This article discusses how trademark holders who have secured a federal registration of their marks can avail themselves of a powerful weapon in the form of an ex-parte seizure order under the Lanham Act.2 Part I defines what constitutes a trademark, as compared to other intellectual property. Part II discusses trademark infringement, enforcement of a trademark holder's rights, and the criteria for obtaining ex-parte relief under the Lanham Act, as well as the benefits of registering a mark under New Hampshire's Model State Trademark Act. Finally, Part III addresses the commencement of an action for trademark infringement in the United States District Court and compliance with the Administrative Procedures for Electronic Case Filing (ECF).

I. Definition of a trademark

Under the Lanham Act a trademark is defined as: "any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those sold by others."3 While the definition on its face appears to be straightforward, in practice, it can become much more complicated. As Judge Learned Hand has explained: [A] trademark is not property in the ordinary sense, but only a word or symbol indicating the origin of a commercial product. The owner of the mark acquires the right to prevent the goods to which the mark is applied from being confused with those of others and to prevent his own trade from being diverted to competitors through their use of misleading marks. There are no rights in a trademark beyond these.4 Trademarks are not rights in gross, but rather symbols of the public's confidence or "goodwill" in a particular product.5

II. Trademark Infringement

Under the Lanham Act, infringement of a trademark is defined as the "use in commerce (of) any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (where persons without authorization ) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive."6 Infringement arises where the use of a mark by another "carries with it a likelihood of confusing an appreciable number of reasonably prudent purchasers exercising ordinary care."7

Most often the relief available for infringement is the issuance of an injunction to enjoin and restrain the infringing conduct.8 However, the remedies available to the trademark holder under Section 1116 are not limited to injunctive relief.9 Congress recognized the inherent difficulties for trademark holders to be able to determine and prove the extent of the infringement of their marks where an infringer is provided notice and has the opportunity (and the motive) to conceal the true extent of their infringement.10 In response to the near daily assault upon the holders of famous trademarks, the United States Congress enacted the provisions of 15 U.S.C. 1116(d) in order to protect trademark owners. The legislative purpose underlying 1116(d) is manifest from the Joint Statement of the congressional committees:

The purpose of the ex-parte seizure provision is to provide victims of trademark counterfeiting with the means of...

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