Your intellectual property (IP) – patents, trademarks, copyrights, and trade secrets – is one of your most valuable assets. In today’s competitive market, disputes over IP can quickly become complex and expensive. So, the earlier you address an issue, the better your chances of a favorable outcome.
Whether you suspect infringement, have been accused of infringement, or want to take proactive steps to protect your IP, we understand the diverse challenges of businesses, creators, and inventors and so we will evaluate your case, explain your options, and help you develop a cost-effective strategy to enforce your rights or defend against any claims, including for example:
Sending takedown notices for online infringements
Sending cease-and-desist letters
Negotiating licenses, coexistence agreements, and protective agreements
Filing lawsuits for injunctions and damages
The following is provided as a sample of possible claims and defenses for educational purposes and does not constitute legal advice. For specific guidance regarding your situation, contact us for a virtual consultation or to meet in our New Orleans office.
Trademark Infringement, Unfair Competition, & Dilution
Trademark infringement occurs when someone uses a mark that is confusingly similar to a registered or unregistered trademark in connection with related goods or services, likely to cause consumer confusion as to the source of the goods or services. This can include using a similar name, slogan, logo, or trade dress.
Unfair competition is when someone uses deceptive practices that harm a brand. It is broader than infringement. A classic example is called “passing off” – where consumers are tricked into thinking goods or services are those of a competitor, even if the marks are not confusingly similar.
Dilution applies to famous trademarks. It occurs when someone’s use of a mark, even if not confusingly similar, dilutes the distinctiveness of the famous trademark by blurring its association with another brand or by tarnishing its reputation.
There are certain defenses that may be raised in a trademark lawsuit. These are often complex and are fact-specific, but some common examples include:
Priority: In the world of trademarks, priority is all about who used a mark in commerce first. It is a race to the marketplace. Generally, whoever was first to sell goods or services under a specific mark wins the right to that mark. Think of it this way: if you start selling “An Arbitrarily Named Coffee” before anyone else, then you are likely to have priority for ownership of that mark even if someone else registers it or tries to register it later, although there are some exceptions and complexities.
No Likelihood of Confusion: The marks are not similar enough or the goods/services are too different to cause consumer confusion.
Descriptiveness: The alleged trademark is merely descriptive of the goods/services.
Fair Use: The use of the alleged trademark is for nominative fair use (identifying your product) or classic fair use (criticism, commentary, etc.).
Abandonment: The alleged trademark was abandoned through non-use in commerce.
Genericism: The alleged trademark has become generic (e.g., “aspirin”).
Patent Infringement
Patent infringement occurs when someone makes, uses, sells, offers to sell, or imports a product or process that infringes one or more claims of a patent. This can be direct infringement, induced infringement, or contributory infringement.
There are certain defenses that may be raised in a patent infringement lawsuit. These are often complex and are fact-specific, but some common examples include:
Non-Infringement: The accused product or process does not fall within the scope of the patent claims.
Invalidity: The patent is invalid due to prior art or other defects.
Inequitable Conduct: The patent was obtained through fraud or misrepresentation.
Patent Exhaustion: The patent rights are exhausted after the first authorized sale of the patented product.
Copyright Infringement
Copyright infringement occurs when someone uses a copyrighted work without permission. This can include copying, distributing, displaying, performing, or creating derivative works based on an original creation. Even unintentional infringement can be a violation. Common examples include:
Unauthorized reproduction of music or artwork.
Using copyrighted text in a book or article without permission.
Performing a copyrighted song without a license.
Creating derivative works that are substantially similar to the original.
There are certain defenses that may be raised in a copyright infringement lawsuit. These are often complex and are fact-specific, but some common examples include:
Fair Use: Fair use allows limited use of copyrighted material for purposes such as criticism, commentary, news reporting, teaching, scholarship, or research. The determination of fair use depends on several factors, including the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the effect of the use upon the potential market for or value of the copyrighted work.
Independent Creation: The allegedly infringing work was created independently without copying the copyrighted work.
Public Domain: Works in the public domain are no longer protected by copyright and might be able to be used freely. This typically occurs after the copyright has expired.
Lack of Ownership: The plaintiff does not own the copyright to the work.
Trade Secret Misappropriation
Trade secret misappropriation occurs when someone improperly acquires, discloses, or uses confidential trade secrets, giving them an unfair competitive advantage.
There are certain defenses that may be raised in such a lawsuit. These are often complex and are fact-specific, but some common examples include:
Independent Development: The allegedly misappropriated information was developed independently.
No Trade Secret Exists: The information is not a trade secret because it is publicly known or generally known within the industry.
No Misappropriation: The third party did not acquire the information improperly.
Proactive Protection
We also assist clients with proactive measures to avoid litigation:
Trademark Clearance Searches: Conducting searches to ensure your mark is available for use and registration.
Patentability Searches: Evaluating the patentability of your inventions before investing in the patent process.
Copyright Registration: Registering your copyrighted works to establish a public record of ownership.
Trade Secret Protection Programs: Implementing procedures to protect your confidential information.
Negotiating Licenses and Coexistence Agreements: Creating mutually beneficial agreements with other parties regarding IP use.