Trademark Litigation

Our counseling services often begin at a trademark’s inception with proactive advice during the selection and prosecution process to help avoid or minimize the chances of litigation. But when problems arise and valuable trademark rights are at stake or an accusation has been made, we believe it pays to have seasoned litigators on your side. We have handled cases that span numerous industries and implicate all types of trademark rights. Representing both plaintiffs and defendants, our lawyers have decades of experience litigating both large and small trademark cases before courts throughout the country. We regularly appear before the U.S. Patent and Trademark Office and its Trademark Trial and Appeal Board (TTAB), federal circuit courts of appeal, district courts, and other tribunals.

Our vast litigation experience makes our attorneys well versed in the best ways to approach cases, whether large or small, complex or straightforward. We assess the potential risks and rewards of disputes and provide creative solutions for clients of all sizes.

Infringement and Dilution

Our litigation practice covers all types of trademark infringement and dilution cases involving trademarks, service marks, trade dress, product configuration, trade names, domain names, letters, numbers, colors, and telephone numbers. We have an impressive track record of favorably resolving litigations for our clients, whether by choosing a forum that gives clients the best chance to win on the law, filing a motion to dismiss, obtaining an early temporary restraining order or preliminary injunction, positioning a case for settlement, moving for summary judgment, or taking the case to trial. One of our strengths is the use of experts to enhance our clients’ legal positions. We work with numerous consumer survey experts on a wide range of issues in trademark litigation, including likelihood of confusion, likelihood of dilution, genericness, secondary meaning, and fame. We also make strategic use of other experts in areas such as linguistics, marketing, consumer psychology, industry practices, and damages.

TTAB litigation

TTAB proceedings are much like civil litigation, including initial, expert, and pretrial disclosures. The Rapacke Law Group has a wealth of experience in civil litigation and we have had a substantial practice before the TTAB. Many of our trademark attorneys have extensive expertise in handling opposition and cancellation proceedings before the TTAB.

We treat each opposition and cancellation as a unique matter. We look at the claims and defenses and the relevant evidence in view of our client’s goals, resources, and the merits of the case. We then formulate a plan to best achieve a client’s goals, whether by settlement or trying the case. In particular, we develop an early discovery plan for each case. We often recommend minimal, targeted discovery and sometimes no discovery at all. In cases where we represent the plaintiff, we create overall strategies, taking into consideration the nature and extent of the opponent’s use (if any) of the challenged mark.

TRADEMARK - FALSE ADVERTISING

Helping you compete

If a client’s brand, goodwill, or standing in the marketplace is threatened by false statements or deceptive advertising, an immediate response is often required. The Rapacke Law Group has successfully achieved swift resolutions, including restraining orders, for our clients. We are well versed with the Lanham Act and understand the nuances of litigating claims involving false claims and deceptive practices that threaten or cause consumer confusion.

Strong cases built with a strong foundation of technical and legal expertise

When confronted with false and deceptive advertising claims, you need a seasoned litigation team with deep knowledge of both the technology at issue and the law to bring a multifaceted and strategic approach to the dispute. Proving that an advertisement is false often requires two levels of expertise—technical proficiency to establish the truth or falsity of the statement, and experience with surveys to measure the impact on consumers. The Rapacke Law Group is uniquely qualified to handle both of these areas. Our international network of resources, combined with our technical backgrounds, enable us to identify and retain the world’s leading technical experts and partner with them to assess advertising claims, scientific test methods, and statistical analyses.

We are equally adept at coordinating the survey evidence needed to prove a client’s case. For many years, we have worked with numerous consumer survey experts to develop and utilize evidence on a wide range of issues, including likelihood of confusion, likelihood of dilution, genericness, secondary meaning, fame, and, of course, the truth or falsity of advertising. The Rapacke Law Group also makes strategic use of other experts in areas such as linguistics, marketing, consumer psychology, industry practices, statistics, and damages. As a result, we have the experience to select and prepare witnesses who provide accurate, credible, and understandable testimony on even complex technical issues.

Advertising claims are only one piece of your intellectual property puzzle

The Rapacke Law Group’s experience in all areas of IP law, including trademark, copyright, unfair competition, trade secrets, and utility and design patents, enables us to form complementary strategies to best protect your company’s products on many fronts. False advertising claims are often simultaneously litigated with trademarks or design patents, and our trial lawyers draw on decades of experience in all of these IP areas to collectively protect our clients’ interests.

At The Rapacke Law Group, we understand that victory comes through many channels and in many forms. We are fully prepared and qualified to litigate through trial and appeal. But our ability to obtain successful results on early motions or in arbitrations and settlement negotiations means we often resolve cases long before trial and at considerable savings to clients. Simply stated, a successful litigation outcome is one that meets your business goals in the most cost efficient manner possible.