Under the series “Fundamentals of Trademarks,” a number of continuing blog posts have been dedicated to exploring trademarks in detail & depth. With the previous post on the ideology of “standing to sue” marking the end of our discussion on key aspects of trademark enforcement, we now switch gears and look into the “Legal Remedies Provided for Trademark Infringement & Dilution” in this blog post and Part XVIII of the series.
Legal Remedies Provided for Trademark Infringement & Dilution
Pursuant to 15 U.S.C. § 1116, the trademark law provides trademark owners with legal means of seeking injunctive relief for trademark dilution and infringement. Once a trademark owner successfully demonstrates dilution and/or infringement, the court issues, permanently and as part of the relief, an order enjoining the diluting or infringing activity or, preliminarily, with a trial in progress. Notably, a court may also issue a mandatory relief by requiring (1) the defendant’s assets to be frozen, (2) the infringing goods to be destroyed or recalled, and/or (3) the infringing goods to be seized.
Although one must demonstrate willfulness to obtain a monetary award when it comes to dilution claims, a trademark owner may also recover a number of damages if their mark has been infringed upon. Pursuant to 15 U.S.C. § 1117(a), such damages may include (1) costs, (2) actual damages, (3) attorneys’ fees, and/or (4) defendant’s profits.
It is also worth noting that, as opposed to merely proving a likelihood of confusion, plaintiffs are required, in most circuits, to demonstrate and provide evidence of customer confusion to recover trademark infringement damages. Generally, a reasonable royalty (such as a fair market value for a mark’s license), the expense in preventing continued customer confusion (may include reasonable advertisement costs for correcting customer confusion), compensation for a loss of goodwill or reputation, and any profits the plaintiff(s) may have lost following the infringement. Further, although it is the discretion of the courts to triple the amount of actual damages as a way of enhancing recoverable damages, there are no punitive damages under the law. However, courts usually reserve enhanced damages in cases where the defendant(s) are found to have acted egregiously and willfully.
In most cases, although the mental state of the defendant is a “significantly important consideration,” a showing of willful trademark infringement is not mandatory to recover the defendant’s profits. Additionally, pursuant to 15 U.S.C. § 1117(a), the Lanham Act provides, concerning attorneys’ fees, that the prevailing party may be awarded reasonable attorneys’ fees in exceptional cases. For awarding such attorneys’ fees, the court considers if (1) the unsuccessful party demonstrated unreasonableness in litigating the case, and (2) with respect to the substantive strength of a party’s litigating position, the case stands out from others when both the facts of the case and the governing law are considered.
With that, we have concluded our series on the fundamentals of trademarks. We hope that through the education and enlightenment of the eighteen blogs, we have armed you with the right tools to understand trademarks in a broader sense, which consequently helps you stay ahead of the game as it concerns matters of trademark infringement.
As usual, stay tuned for more legal guidance, training, and education in our upcoming series. In the interim, if there are any questions or comments, please let us know at the Contact Us page!
Always rising above the bar,
Isaac T.,
Legal Writer, Author, & Publisher.