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

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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.

The 2012 Cumulative Supplement  provides important updates on relevant case law, including:

• Fourth Circuit’s Rosetta Stone v. Google decision concerning keyword advertising claims
• Second Circuit’s Nike v. Already holding regarding the effect of a covenant not to sue
• Reports concerning decisions from the Sixth and Seventh Circuits relating to functionality and trade dress
• Recent decisions relating to counterclaims and amendment to pleadings after trial
• Discussion of recent survey cases, including percentage rates and challenges based on survey flaws
• Chapters on summary judgment motions and other topics
• Inclusion of recent changes to venue rules in the Federal Rules of Civil Procedure
• Information concerning other circuit court decisions through May 2012 relating to causes of action and defenses

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About the Authors
David S. Fleming is a shareholder in the Chicago office of the U.S. intellectual property firm of Brinks Hofer 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 Hofer 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. 

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