Trademark Infringement Remedies, Third Edition

This valuable reference gives practitioners complete coverage of all aspects of trademark rights, liabilities, and remedies in both traditional and emerging forms of trademark use and abuse. Topics include establishing liability, equitable relief, preliminary and permanent injunctions, relief and remedies under state law for infringement and unfair competition, and much more.

Price: $545 Main Volume

Meet The Author

Steve Meleen
Editor-in-Chief, Main Volume


Detailed, practical analysis of the full range of federal and state trademark infringement remedies

This treatise provides trademark owners and their counsel the guidance they need to effectively defend and protect their brands and maintain the value of trademarks. It covers all aspects of trademark rights, liabilities, and remedies, as well as the civil infringement remedies available today in federal and state courts, and provides keen insight from expert practitioners. The Third Edition discusses necessary elements in establishing liability for trademark and unfair competition; principles for equitable relief and the impact of bad faith on a practitioner’s case; issuance of preliminary and permanent injunctions; wrongful seizure of another’s goods occurring in the area of “extraordinary” relief; attorneys’ fees; availability of special enforcement remedies; relief and remedies under state law for infringement and unfair competition; and special relief available in counterfeiting cases.  

The thoroughly revised Third Edition includes extensively updated chapters on The Origin of Trademark Rights and the Nature of the Interests Protected, and General Principles. Other new discussions in the Third Edition include the following:

  • The Federal Circuit’s ruling in Princeton Vanguard, LLC v. Frito-Lay North America, Inc., rejecting the Trademark Trial and Appeal Board’s statement that there are two different tests that can be used to analyze genericness

  • The Federal Circuit’s decision in In reDriven Innovations, Inc.,in which the court explained that when a mark fails to cause an “instantaneous” mental leap to the attributes of the goods or services, suggestiveness is strongly indicated

  • In Romag Fasteners, Inc. v. Fossil, Inc., the Federal Circuit (applying Second Circuit law) reviewed the state of the law in the Second Circuit and concluded that willfulness is a requirement for an award of profits

  • Expanded discussions on plaintiff’s damages, including barriers to double recovery and measurement of lost profits

  • Examination of how courts are treating requests for fees after Octane Fitness, including decisions by the Fifth Circuit in Vetter v. McAtee and the Ninth Circuit in SunEarth, Inc. v. Sun Earth Solar Power Co.

  • And much more  

Summary of Contents

Part I. Introduction

Chapter 1. The Origins of Trademark Rights and the Nature of the Interests Protected

Chapter 2. Establishing Trademark and Unfair Competition Liability

Part II. Injunctive Relief

Chapter 3. General Principles

Chapter 4. Preliminary Injunctions

Chapter 5. Permanent Injunctions

Chapter 6. Extraordinary Circumstances and Relief

Part III. Monetary Relief

Chapter 7. Defendant’s Profits

Chapter 8. Plaintiff’s Damages

Part IV. Miscellaneous Civil Remedies

Chapter 9. Attorneys’ Fees

Chapter 10. Special Enforcement Remedies

Chapter 11. State Law Remedies for Trademark Infringement and Unfair Competition

Chapter 12. Special Remedies for Counterfeit

Chapter 13. Remedies for Trademark Infringement and Unfair Competition on the Internet

Table of Contents • Index



Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.

Steve Meleen is Managing Member of Pirkey Barber PLLC, Austin, TX. He has specialized in trademark law with Arnold White & Durkee since 1996. 

ABA Section of Intellectual Property Law



View full tables of contents, preface or introduction.