Here at the Law Office of Vincent Miletti, Esq. and the home of the #UnusuallyMotivated movement, we take pride as a resilient and dependable legal services firm, providing such services in both a traditional and online, web-based environment. With mastered specialization in areas such as Employment and Labor Law, Intellectual Property (I.P.) (trademark, copyright, patent), Entertainment Law, and e-Commerce (Supply Chain, Distribution, Fulfillment, Standard Legal & Regulatory), we provide a range of legal services including, but not limited to traditional legal representation (litigation, mediation, arbitration, opinion letters, and advisory), non-litigated business legal representation and legal counsel, and unique, online legal services such as smart forms, mobile training, legal marketing, and development.

Still, here at Miletti Law®, we feel obligated to enlighten, educate, and create awareness about how these issues and many others affect our unusually motivated® readers and/or their businesses. Accordingly, to achieve this goal, we have committed ourselves to create authoritative, trustworthy, & distinctive content. Usually, this content is featured as videos posted on our YouTube Channel https://www.youtube.com/channel/UCtvUryqkkMAJLwrLu2BBt6w and blogs that are published on our website WWW.MILETTILAW.COM. With that, the ball is in your court and you have an effortless obligation to subscribe to the channel and sign up for the Newsletter on the website, which encompasses the best way to ensure that you stay in the loop and feel the positive impact of the knowledge bombs that we drop here!

As the authoritative force in Employment Law, it only seemed right to introduce one of the many upcoming series where we remain persistent in introducing a variety of topics, which will look to not only educate but also deliver in a sense that only Miletti Law® can. In this regard, this is Part XVIII and the last blog under the series “Fundamentals of Trademarks,” where a number of continuing blogs have been dedicated to exploring trademarks in detail & depth. With the previous blog 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 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 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.