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Financial aspects of an infringement suit

Posted by . updated on 11/11/2009
Hi,

I am hoping for a generic, rather than specific answer regarding an infringement suit.

Unique trademark in use for years - did not register it.
Can absolutely prove confusion in the market place.
Infringing usage is exactly the same.


Infringing company has just had mark registered and period to oppose is past, but within 5 years so able to go for cancellation.  Filing was intent to use.

I won't go into details, but infringing company has spent a large sum of time and money planning to use my mark and having to change name is something they absolutely will not want to do as it will greatly hurt their marketing plan.

IP attorneys I've talked to all agree I have a very strong case, however, they are hesitant about the case because the infringing company has a lot of money and it seems they think this company will use a strategy of outspending me with vast sums of legal fees as a strategy to get me out of the picture (they will appeal and appeal until I run out of money), or that they will make me an offer to buy the name (and I don't want to sell it).

Now I could potentially fund a case all the way to the end, but the amount of legal fees would far exceed the value of trademark for my usage.

I understand there are no guarantees of legal fees being awarded if I win in the end, but that it is a "possibilty".  I can't seem to get any idea of how often attorneys fees are awarded?  The attorneys I've talked to don't even want to say.

I am looking for some general guidance - is it approximately 5% of the time, 10%, etc?

It really seems like anyone can lose the TM they worked for years to develop if they don't have enough money to fight a company with a lot of money.  Really frustrating.
Answers (2)
 
JSonnabend
From the bare facts you've provided, I would not rely on an award of attorneys' fees.

It's an unfortunate truth, but one must enforce his or her mark or risk losing it.

One final note, I handle TM enforcement routinely for my clients, including litigation if and when necessary.  Not all litigation is back-breakingly expensive.

- Jeff
 
 
bcapehart
Kt -

In certain types of tm infringement actions (intentional infringement, litigation misconduct, etc), attorney fees can be awarded, but normally, a court won't award such fees unless there must be a high level of bad/intentional actions on the part of the infringer.

Another option would be to seek cancel the registration in front of the TTAB.  Depending on your facts, the costs may be a bit less than filing an infringement suit in federal court.

Brent
 

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