Trademark/Trade Dress Litigation

• Author: David R. Gerk - John M. Fleming
• Pages: 253-269

P A R T 3

Trademark/Trade Dress

Litigation

253

If names are not correct, language will not be in accordance with

the truth of things.

—Confucius

I. REQUIREMENTS FOR BRINGING SUIT

A. Infringement and Related Causes of Action

The actions and requirements for bringing a trademark infringement suit

in a federal district court do not differ significantly from the require-

ments for bringing a patent or copyright infringement lawsuit or any

other civil lawsuit in a federal district court. Distinctions generally arise

merely from the substance of the case. A complaint must be filed along

with a cover sheet, a filing fee, and a certification of interested parties.

As those familiar with litigation in federal district court are aware, the

complaint sets forth the claim or claims against the accused infringer and

indicates the corresponding requests or demands. It is imperative to de-

termine identification and claim of proper personal jurisdiction and sub-

ject matter jurisdiction, or in other words, jurisdiction over the defendant

and a federal question (or diversity jurisdiction), respectively. Additional

assertions, such as one of proper venue, should be made and should in-

clude proper statutory citation. Trademark plaintiffs should also include

any other claims in the complaint, such as violations of various provi-

Part 3

254 Section 3, Part 3

sions of the Lanham Act,1 dilution claims, unfair competition claims,

claims based in contract law, or supplemental claims, including state law

claims to be heard or considered as part of the case. Trademark litiga-

tions may be somewhat distinct from patent and copyright claims, as

there may be common-law and statutory claims asserted. For example,

Section 43 of the Lanham Act (15 U.S.C. §1125) gives rise to many of

the key statutory causes of action, including unfair competition, trade-

mark and trade dress infringement, importation to infringing goods, di-

lution, and cyberpiracy prevention. However, other related and similar

common-law causes of action (e.g., common-law unfair competition and

trademark infringement) can and should be brought as additional claims

in the suit.

Plaintiffs in a trademark infringement case—like plaintiffs in any

other federal litigation—will want to reference closely the Federal Rules

of Civil Procedure (FRCP) to ensure proper action in initiating and pur-

suing a claim against an accused infringer. Typically, trademark infringe-

ment plaintiffs will want to make certain assertions to satisfy key provisions

of the FRCP. For example, in order to ensure compliance with FRCP

8(a), plaintiffs should at least identify the trademark that is being in-

fringed, assert that the plaintiff is the owner of the trademark, assert that

the trademark has been registered with the USPTO, and provide allega-

tions describing the infringing activity. Plaintiffs should attach a copy of

the active registration, as well as evidence of the infringing activity, if at

all possible. This evidence may be copies of advertisements, product

catalogs, web pages, photographs, or other materials evidencing the in-

fringing activity. While every instance of infringement need not be in-

cluded in the complaint, sufficient evidence should be included to support

each of the claims made in the complaint. Evidence of registration and

infringement should be included in the complaint as an attached exhibit.

Along with or soon after filing the complaint, the plaintiff in some in-

stances may file a motion for preliminary injunction to enjoin the defen-

dant from further infringing the plaintiff’s mark, and an expedited hearing

on this motion may be requested. The judge may grant or deny the mo-

tion and/or alter the discovery schedule accordingly.

While the timing of the case schedule is subject to judicial modifica-

tion, after filing of the complaint, the defendant in a typical scenario will

1. For example, many claims of trademark infringement and like causes

of action stem from the Lanham Act. See, e.g., regarding trademark infringe-

ment Lanham Act §43(a) [15 U.S.C. §1125(a)] and regarding dilution Lanham

Act §43(c) [15 U.S.C. §1125(c)].