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Trademark Litigation Practice, with 2013 Cumulative Supplement

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A practical guide to the procedural and strategic issues that lawyers routinely face in litigating trademark and other Lanham Act cases

Main Volume Information

The decisions handed down in trademark cases can have diverse—and far-reaching—commercial and social impact. For trial lawyers facing the challenge of litigating Lanham Act cases, extensive knowledge of the complexities of both litigation procedure and trademark law is key. And few one-volume desk references provide the detailed procedural and substantive analysis of trademark litigation that is offered in Bloomberg BNA’s Trademark Litigation Practice

This resource covers every aspect of Lanham Act cases, from pre-filing considerations to disclosures and discovery, through motion practice, trial, and post-trial proceedings. You’ll also find analysis of alternative proceedings that may be used in trademark cases, including oppositions and cancellations in the TTAB; Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceedings for domain names; ITC investigations; and alternative dispute resolution tools. Trademark Litigation Practice covers all of these practical litigation topics in detail, with many topics presented in an easy-to-use, circuit-by-circuit format. Significant topics trademark litigators will want to focus on include:

  • Use of survey and other expert witnesses in trademark cases
  • Injunctive and monetary relief in trademark and false advertising cases
  • Discovery and initial disclosures, including discovery of electronically stored information
  • Other avenues for pursuing claims relating to trademarks, such as oppositions and cancellations in the TTAB, domain name UDRP proceedings, and actions for exclusion orders in the ITC 

Trademark Litigation Practice is unique in providing a detailed and comprehensive, yet concise, legal reference to the strategic issues that lawyers routinely face in Lanham Act litigation. It includes an index, case table, and appendices with examples of relevant local practice rules and forms.

Supplement Information

The 2013 Cumulative Supplement provides updates on important issues including:

  • Substantive trademark law issues, updating decisions regarding likelihood of confusion factors, various defenses, such as genericness, aesthetic functionality, abandonment, fraud, laches, nominative fair use and parody; and adding new topics on res judicata and collateral estoppel, bankruptcy, preemption and stays.
  • Surveys, adding discussions of survey evidence as a proxy for evidence of actual confusion; “how much is enough” for finding a likelihood of confusion; effect of likelihood of confusion surveys on secondary meaning; and judicial criticism of survey methodologies
  • Anti-counterfeiting, including reviewing requirements for stating a counterfeiting claim; comparing counterfeiting claims to basic infringement and unfair competition claims; the relevance of marketplace conditions; and presumptions that do and do not flow from the fact a mark is a counterfeit
  • Attorney-client privilege, adding to the discussion of how the attorney-client privilege applies to information disclosed in trademark search reports as opposed to attorney-client communications concerning the information contained in the report
  • ITC proceedings, updating procedural discussion to reflect recent ITC rules changes dealing with complaints and discovery
  • Domain name issues, adding a new topic on ICANN’s Trademark Clearinghouse for the expanded gTLD program
  • Other updates, such as case references on pleadings, Rule 12 motions, preliminary relief, summary judgment, and trial and post-trial proceedings 

Main Volume Information

2010/804 pp. Hardcover/Order #9342P

Supplement Information

2013/418 pp. Softcover/ISBN 978-1-61746-342-6/Order #2342

Main Volume Information

About the Authors
David S. Fleming is a shareholder in the Chicago office of the U.S. intellectual property firm of Brinks Gilson & Lione. He has litigated all types of trademark cases in federal courts throughout the United States, as well as in the TTAB and in UDRP proceedings.

John T. Gabrielides is a shareholder in the Chicago office of the U.S. intellectual property firm of Brinks Gilson & Lione. He has litigated the full spectrum of Lanham Act cases in federal courts, including trials before juries and judges, as well as preliminary injunction proceedings. 

Supplement Information

About the Authors
David S. Fleming and John T. Gabrielides