Secondary Trademark Infringement, with 2016 Cumulative Supplement

Attorneys and business executives will benefit from this treatise's comprehensive treatment of the law of contributory and vicarious trademark infringement. Real-world litigation examples highlight substantive and procedural issues in secondary trademark infringement cases. Client and practice notes lend a practical tone to this readable book. The authors cover the rapidly expanding area of contributory cybersquatting under the Anticybersquatting Protection Act.

Jane Coleman
Main Volume Authors
Jane Coleman
Supplement Authors


Thorough analysis and guidance on this rapidly growing area of intellectual property law.

Secondary Trademark Infringement is the first and only work that provides a comprehensive treatment of the law of contributory and vicarious trademark infringement, combining in-depth examination of the case law with expert practical insights into litigating secondary liability cases. Beginning with the early “passing off” cases, this treatise covers the development of the law that has become one of the most rapidly expanding areas involving the Internet. Meticulously organized and accessible, Secondary Trademark Infringement covers key topics in the field, such as:

  • Infringement liability of businesses that offer Internet facilities to third parties using trademarks or trademark-protected goods in commerce, including retailers, auctioneers, and distributors
  • Company exposure to liability for the online activities of their hosting customers or advertisers
  • Legal issues arising from Web-hosting and other Internet infrastructure or connectivity
  • Exposure reduction measures for companies and institutions that do not use or facilitate trademark use directly but are part of a commercial chain of activity 

This reference features extensive and detailed case law, analysis, commentary, and practice notes on a wide variety of subjects of practical interest and importance to attorneys and business executives alike. These practice notes provide commentary and guidance, based on real-world litigation experience, about the substantive and procedural issues in secondary trademark infringement cases (from both the trademark owner’s and the accused infringer’s point of view), recovery of damages and injunctive relief, and guidelines for trademark protection and enforcement, as well as risk management for Internet service providers and other service providers.

Secondary Trademark Infringement addresses developing areas of law, including:

  • Corporate officers’ liability for the trademark infringement of their companies
  • Whether each “subspecies” of trademark infringement should be governed by the same secondary liability standard
  • The relationship between secondary trademark and secondary copyright infringement
  • Secondary liability for trademark infringement on the Internet, including keyword advertising cases
  • Damages for contributory trademark infringement
  • Contributory trademark dilution and contributory cybersquatting 

Supplement Information  


The 2016 Supplement covers the following developments and new material:

  • Chapter 4 has been expanded to include a new section on contributory false advertising in light of the Eleventh Circuit’s decision in Duty Free Ams., Inc. v. Estee Lauder Cos., 797 F.3d 1248 (11th Cir. 2015)(DFA). DFA signals the courts’ willingness to continue to extend contributory liability doctrine across the spectrum of Lanham Act violations, as discussed throughout Chapter 4. 

  • The courts’ further movement away from a rigid reading of Tiffany’s requirement of “specific knowledge of infringement” is addressed in Chapter 3. 

  • Chapter 12 examines the court’s decision to award maximum statutory damages against the contributory infringers in Innovation Ventures, LLC v. Ultimate One Distrib. Corp., 2016 U.S. Dist. LEXIS 44576 (E.D.N.Y. Mar. 31, 2016), a case involving wide-scale counterfeiting of a popular liquid dietary supplement produced in a facility that posed a threat to public health. 

  • Although, as a general rule, a corporate parent is not automatically liable for the acts of its wholly owned subsidiary, in TRB Acquisitions LLC v. Seduka, LLC, 2016 U.S. Dist. LEXIS 64846 (S.D.N.Y. May 10, 2016)(TRB Acquisitions), the court nonetheless sustained the plaintiff’s joint tortfeasor claim against a corporation and its parent where the plaintiff’s allegations asserted more than a mere parent-subsidiary relationship. TRB Acquisitions is discussed in detail in Chapter 11.


Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.
Jane Coleman is author and creator of and a former Assistant Director in the Legal Affairs department for the national office of the Anti-Defamation League (ADL) in New York, N.Y. She is a legal writer and editor on topics as diverse as New York and New Jersey civil practice, estate taxation and claims against public entities. Ms. Coleman also is a co-author, with husband Ron Coleman, of a work on business and commercial litigation in federal courts.

Griffith B. Price, Jr., retired was senior counsel at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, D.C., with extensive background in the procedural and substantive aspects of IP litigation in the federal courts, as well as federal and state appellate courts.


Naresh Kilaru is a graduate of Harvard College and The George Washington University Law School. Most of his legal career has been spent at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where he focuses his practice almost exclusively on trademark litigation. He has served as lead counsel in Trademark Trial and Appeal Board (TTAB) cases, authored hundreds of motions, pleadings, and briefs in cases before district and appellate courts, and has jury trial experience. In addi­tion to his litigation practice, Naresh counsels clients on brand protection and enforcement strategies in the United States and around the world. For two years, Naresh was also in-house counsel at Turner Broadcasting System, where he was responsible for negotiating content-licensing deals between Turner and its distributors and advising on IP due diligence in mergers and acquisitions.


Naresh is active in a number of bar associations, including the Amer­ican Bar Association’s Section of Intellectual Property Law. He served as Vice Chair of the ABA’s Trademark Litigation Committee from 2012-2015 and has been Chair of the ABA’s IP Transactions & Licensing Committee since 2013. He has also served on the editorial board of the ABA’s Land­slide magazine since 2011. Naresh regularly speaks at national and inter­national bar association conferences on trademark litigation issues and has written numerous articles on a wide range of trademark topics. He has also been a guest lecturer in The George Washington University Law School’s IP Licensing course since 2012.



View full tables of contents and read the book’s preface or introduction.


Read what others have to say about this Bloomberg BNA book.

This first monograph focusing specifically on secondary trademark infringement bids fair to become a definitive desk reference on a topic of growing importance. Notwithstanding the limitation suggested by its title, the book expansively considers secondary infringement and liability for dilution/tarnishment and cybersquatting as well, and addresses its topic in not only classic trademark disputes but also a variety of special situations, including franchising, web hosting, credit card services, and several others. Beginning with policy, doctrine, and the basic elements of a claim, the book is logically and meticulously well-organized and easy to read and use as a reference. Enhanced by an engaging and user-friendly writing style, and a straightforward approach to its subject, the book offers analysis of the applicable case law as well as practice notes. It’s an instant necessity for the desktop or bookshelf of any serious trademark practitioner. 

Robert C. Cumbow

Attorney, Graham & Dunn PC

Secondary Trademark Infringement is a comprehensive and up-to-date guide to the law of secondary liability for trademark infringement. To my knowledge, it provides the only complete review and analysis of all the relevant cases, legal theories and emerging issues relating to someone other than the direct infringer being accused of infringing another’s trademark. And unlike many other treatises, it includes a full complement of excellent Practice Notes written by a seasoned IP litigator. Topics covered include (i) the elements of contributory trademark infringement, (ii) secondary trademark infringement on the Internet, (iii) a comparison of secondary trademark and secondary copyright infringement, and (iv) a review of other “subspecies” of secondary trademark infringement and their respective legal standards. For anyone seeking practical insight on how to litigate secondary liability cases, or answers to questions on the topic in general, Secondary Trademark Infringement is an essential reference work that belongs on every trademark attorney’s bookshelf. It is a well written, well organized, straightforward guide that delivers on its promise of providing a full overview and examination of this dynamic area of the law.

Oliver Herzfeld

SVP and Chief Legal Officer, Beanstalk, a leading global brand licensing agency and part of the Diversified Agency Services division of Omnicom Group