Trademark Litigation Practice, with 2015 Cumulative Supplement

This essential guide will help trial lawyers facing the challenge of litigating Lanham Act cases navigate every aspect of trademark litigation, from pre-filing considerations to disclosures and discovery, through motion practice, trial, and post-trial proceedings.


A practical guide to the procedural and strategic issues faced in litigating trademark and other Lanham Act cases.

Trademark Litigation Practice covers every aspect of Lanham Act cases, from pre-filing considerations to disclosures and discovery, through motion practice, trial, and post-trial proceedings. The treatise also includes 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, International Trade Commission investigations, and alternative dispute resolution tools.

The 2015 Cumulative Supplement includes analysis and review of:

  • The U.S. Supreme Court’s patent decision in Octane Fitness v. ICON Health Fitness, which addressed what makes a case “exceptional” for purposes of an award of attorneys’ fees, and a related discussion of how district and circuit courts have applied Octane Fitness to Lanham Act cases
  • The Supreme Court’s decisions relating to priority based on tacking (Hana Financial, Inc. v. Hana Bank) and the effect to be given to decisions by the Trademark Trial and Appeal Board (B&B Hardware, Inc. v. Hargis Industries, Inc.)
  • Circuit court decisions relating to the First Amendment and the Lanham Act’s prohibition of registration of disparaging marks, likelihood of confusion factors in various circuits, false advertising, false endorsement, and defenses such as genericness, mere descriptiveness, acquiescence, and laches
  • Cases involving prejudgment interest awards, and addition of a section on special monetary relief for counterfeiting
  • Updates relating to subject-matter jurisdiction, and decisions relating to failure to state a claim
  • New topics added relating to the interaction of preliminary injunction motions and arbitration agreements; appellate review of discovery orders; various percentages considered by courts in determining whether a mark is generic and update case law on the importance of using controls in surveys
  • And more


Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.
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 partner in Barnes & Thornburg’s Chicago office and a member of the Intellectual Property Department. Mr. Gabrielides focuses his practice on trademark and copyright law, with an emphasis in litigation


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