Trademark Litigation Practice, with 2017 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.



This treatise puts into context every aspect of Lanham Act cases, from pre-filing considerations to disclosures and discovery, through motion practice, trial, and post-trial proceedings. The book, written by seasoned trademark lawyers, 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 proceedings for domain names, International Trade Commission investigations, and alternative dispute resolution tools.

 New in the 2017 Cumulative Supplement:

  • The Supreme Court’s consideration of the Lanham Act’s prohibition of disparaging trademarks in Matal v. Lee

  • Updates to the TTAB chapter based on extensive revisions to the TTAB rules

  • The Second Circuit’s discussion of parody in Louis Vuitton Malletier v. My Other Bag

  • ISC v. Security University, in which the Second Circuit discussed nominative fair use

  • The Seventh Circuit’s consideration of functionality in Arlington Specialities v. Urban Aid

  • Huson USA v. Hyson 2U, where the Seventh Circuit addressed the defense of acquiescence

  • The Tenth Circuit’s analysis of packaging trade dress in Forney Industries v. Daco of Missouri

Summary of Contents

Chapter 1. Pre-Filing Considerations

Chapter 2. Pleadings

Chapter 3. Rule 12 Motions

Chapter 4. Preliminary Relief

Chapter 5. Disclosures, Discovery, and Related Pre-Trial Proceedings

Chapter 6. Expert Witnesses

Chapter 7. Summary Judgment

Chapter 8. Trial and Post-Trial Proceedings

Chapter 9. Contempt

Chapter 10. Monetary Relief

Chapter 11. False Advertising

Chapter 12. Anti-Counterfeiting

Chapter 13. Attorney-Client Privilege and Work-Product Immunity

Chapter 14. Trademark Trial and Appeal Board Proceedings

Chapter 15. International Trade Commission Proceedings

Chapter 16. Domain Name Disputes [Revised Chapter Title] 

Chapter 17. Alternative Dispute Resolution Options

Chapter 18. 

Appendix A: Motions re: Attorneys’ Fee

Appendix B: Motions re: Experts 

Table of Cases 


About the Authors



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.