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If you are a registered trademark holder, and an unknowing or unscrupulous person devises a similar one or decides to copy your mark, it can be devastating to your profits and reputation. You can ask your intellectual property lawyer to send a letter of cease-and-desist, which works to stop the infringement in many instances. But what if it does not?
Your attorney can file a federal lawsuit and ask for damages provided for in the Lanham Act when appropriate. A naïve infringer still needs to be stopped, but a targeted theft of your mark should have appropriate consequences. Under the Lanham Act, potential damages if you win a trademark case against an infringer can include injunctive relief and monetary relief. However, the Act does not specifically detail how and when monetary damages should be awarded, but leaves that to the court to assess. In exceptional cases, under 15 United States Code § 1117(a), courts can also award attorney’s fees to the victor.
Injunctive relief is what the court grants to compel an infringer to cease and desist. The premise is that money alone will not stop the infringer from continuing to rob the trademark owner of the right to control and profit from the logo, phrase, or name that consumers recognize. It is the most common type of relief granted to trademark holders.
However, holders must prove irreparable harm before the judge will grant injunctive relief. Irreparable harm depends on how the trademark owner will be affected if an injunction is not granted, how widespread the actual harm is, and how similar cases turn out. Injunctive relief includes temporary restraining orders and temporary or permanent injunctions
An infringing party may be required to cough up profits, known as disgorgement, for the unfair method of earning them. The courts can consider how much the infringer profited by stealing the mark and rule it undeserved, forcing a disgorgement. Alternatively, it can use the proxy method, where the trademark owner’s loss is measured by how much the infringer profits.
Generally, the plaintiff does not need to show that the defendant is either willfully ignorant that their actions infringed on the trademark, or that they did it on purpose in a proxy theory case. They do need to show one or the other to win monetary damages for disgorgement of profits earned by an unfair method.
To recover actual damages done to a trademark owner, the owner as plaintiff must prove confusion directly connected to the infringer caused the economic loss. The owner can show financial records that include lost profits and how much the owner had to pay for advertising to regain customers lost because of the confusion. The owner could also compare goodwill prior to and after the infringement.
A reasonable royalty fixes how much the infringer would have paid the trademark owner if the mark had been licensed for an agreed upon amount. This method is still subjective unless there is a licensing agreement that the infringer breached.
Trademark infringement is much more than an annoyance. The future of your product or service is in question when another person copies it, confusing customers who think they are purchasing your product and end up with an inferior one. Your reputation and profits suffer, and unless the infringer is stopped, your business could continue to decline. We offer proper guidance when appearing before a federal court. Depending on your details, we can ask for injunctive relief and monetary damages. Call now to learn the potential damages if you want to win a trademark case against an infringer.
