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Economic Experts

Experts in Trademark Infringement Damages

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Our consultants understand the nature and distinct characteristics of Lanham Act equitable remedies.

  • Our in-depth Lanham Act knowledge and experience enable us to accurately calculate damage elements unique to trademark and unfair competition claims, such as: damages sustained by the plaintiff, the shift in burden-of-proof, defendant’s profits, apportionment, deductible costs, corrective advertising, and reasonable royalty damages.
  • We clarify complex fact patterns, and present our findings in precise, clearly written Rule 26 expert reports and persuasive expert witness testimony, supported by the evidence.
  • Our representative trademark cases highlight some of the engagements in which we have applied our understanding of Lanham Act remedies.

Trademarks

A trademark is a word, name, symbol, or device that is used in trade or commerce to indicate the source of goods, and to distingquish them from the goods of others. A service mark is the same as a trademark except a that service mark identifies and distinguishes the source of a service. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.

United States’ trademark law is governed by federal and state statutes, as well as common law. The U.S. Trademark Act, also known as the Lanham Act, is part of Title 15 of the U.S. Code and establishes remedies for trademark infringement, trademark dilution, and false advertising.

Trademark Infringement Damages

Plaintiffs are entitled to a wide range of monetary remedies under the Lanham Act, and are frequently awarded injunctions against further infringement or diluting use of the trademark.

Title 15 of the U.S. Code identifies monetary remedies:

“When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a) or (d) [15 USC 1125(a) or (d)], or a willful violation under section 43(c) [15 USC 1125(c)], shall have been established in any civil action arising under this Act, the plaintiff shall be entitled to the provisions of sections 29 and 32, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.”

Under the Lanham Act, a plaintiff can recover monetary remedies including: (1) the defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.1 Further, the Lanham Act states that the plaintiff is required to prove only the defendant’s revenue – the defendant must “prove all elements of cost or deduction claimed.” 2 In addition, “the court may enter judgment, according to the circumstances of the case, up to three times actual damages or profits.” 3

Courts are split regarding the calculation of defendant’s profits. Some courts limit an accounting of the defendant’s profits to an amount equal to the plaintiff’s actual damages. Other courts allow damage awards to include all of the defendant’s ill-gotten profit, plus the plaintiff's actual damages (as long as there is not a double recovery).

 

Notes

  1. Title 15 Section 1117 (Lanham Act)
  2. Ibid.
  3. Ibid.

Featured Trademark Infringement Damages Cases

American Rena International Corp. et al. v. Sis-Joyce International Co. Ltd., et al.

Skin care products

Bell Helicopter Textron, Inc. v. H-S Tool and Parts, Inc., et al.

Trademarked refurbished helicopter parts

Blue Rhino Corporation v. White Rose Propane, LLC

Propane cylinders, lost profit, fees and reimbursements

Bravo Corporation v. U.S. Trading Company

Royalties on the use of the "Hyper" trademark

General Charles E. Yeager v. Fort Knox Security Products

Chuck Yeager’s celebrity

Colorado Instrument, Inc. d/b/a Solar World v. SolarWorld AG, et al.

Use of mark “Solar World”

Denice Shakarian Halicki, et al. v. Carroll Shelby, et al.

Use of marks “Eleanor” and “Gone in 60 Seconds”

H&R Block Eastern Enterprises, Inc., et al. v. Intuit, Inc.

False advertising in TV commercials

Hawaii International, Inc., et al. v. Seven Seas Seafood, Inc., et al.

Smoked tuna designated as tasteless smoked product

Klein Becker USA, LLC, et al. v. Tarik S. Tahini a/k/a Eric Morello, et al.

Use of mark “StriVectin”


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