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What kind of lawyer do I need to litigate against another company that has been trading under a similar name to mine.

Austin, TX |

I have had my company since 1998 providing web development, design, marketing and hosting. I still have clients from 1998. I started in the UK, moved to LA and incorporated in California in 2006, then moved to Austin, and incorporated in Texas in 2008. In July this year I found another company in California trading under a similar name to mine. I researched on Google, and that very night I contacted a Trademark attorney and applied for a Trademark. He told me I should send the company a Cease and Desist letter. My lawyer did this for me and gave them a week to respond. We heard back from their lawyers who said they would contact us after they returned from holiday. We waited and never heard back. My lawyer advised me to take him to court. What kind of lawyer do I need to fight them?

Attorney Answers 6


  1. Best answer

    You want someone who has litigated cases alleging trademark and unfair competition. These cases, while not hard to litigate, do have some tricks; i.e., the use of survey evidence, and making a good damages cases come to mind immediately. I would concentrate on California attorneys that are used to Federal Court - having an attorney who is familiar with the Judges there will save you money.

    Good Luck!

    This answer is not a substitute for professional legal advice. This answer does not create an attorney-client relationship, nor is it a solicitation to offer legal advice. If you ignore this warning and convey confidential information in a private message or comment, there is no duty to keep that information confidential or forego representation adverse to your interests. Seek the advice of a licensed attorney in the appropriate jurisdiction before taking any action that may affect your rights. If you believe you have a claim against someone, consult an attorney immediately, otherwise there is a risk that the time allotted to bring your claim may expire.


  2. You need a trademark litigator, who's experienced in federal court. You might be able to use the same lawyer who wrote your cease and desist letter.

    Some things to consider: Trademarks are territorial, meaning that use of the TM in the UK, if only in the UK, don't acquire rights in the US. Your clients' websites may have been international, but that doesn't mean your company's services and use of your TM was, although if you had a company website using your TM, then it's likely that your company acquired "common law" rights as soon as you launched your website.

    As far as the benefits of having a registered mark, apparently you've only recently applied for a TM. At any rate, it's unlikely that you'd be entitled to attorney's fees since those are only awarded in "extraordinary" cases.

    Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.


  3. In Avvo vernacular, you need an attorney whose practice includes trademark infringement. Avvo's search results are here: http://www.avvo.com/search/lawyer_search?utf8=%E2%9C%93&q=Trademark+Infringement&loc=austin%2C+Texas&commit=Go&ref=nav_search

    If you do an internet search, you may want to add the word litigation or litigator in your search.

    Good luck to you!

    Any answer or other information posted above is general in nature and is not intended, nor should it be construed, as legal advice. This posting does not create an attorney-client relationship between you and the posting attorney, and you are urged to engage a qualified attorney who is licensed to practice in the relevant jurisdiction.


  4. You've already received excellent advice. I write only to discuss two important points bearing on the decision whether you should file suit.

    First, the cost to litigate a trademark infringement case, even a clear winner, will be well over $200,000 if the defendant chooses to fight back. If you file suit and cannot afford to pay that amount to litigate through summary judgment then you very likely should NOT file suit -- because, if you dismiss your suit prior to a judgment, that will dramatically reduce the value and strength of your trademark. By sending the cease and desist letter you have already put your trademark rights at risk because if you let this alleged infringer continue to use "your" mark there is a very good argument that you have "abandoned" your claim to exclusive rights in the mark. If you cannot afford to file suit you should nonetheless follow-up to settle the dispute with some sort of concurrent use agreement or phase out by the other side or something else creative.

    Second, choosing a trademark litigator is a crucial decision. I think it's best to choose one who is physically located in the district where the lawsuit will be filed. You and your existing attorney need to determine, therefore, where in the country the alleged infringer may properly be sued. Determining where the alleged infringer can be sued requires you to learn where it sells the products or services that are branded with the allegedly infringing mark. IF it sells them in the district where you reside then its best to hire an attorney who practices there. If not, then it's best to hire an attorney who practices where the alleged infringer has its principle place of business.

    Good luck.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  5. A trademark infringement lawyer. It sounds like you may already have one, the one advising you. You should talk to him about this and where you want to litigate this and whether you have priority of use. If your attorney only does prosecution and not litigation, then ask for a referral to a litigator. There are a number of fine ones in Austin, where you would likely want to litigate this, or in California if your litigator opts to sue there.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.


  6. You need an experienced trademark litigator. There are interesting strategic questions here, including whether you should bring suit in California or Texas. Without knowing many more details I could not advise you on this and many other litigation strategy issues.

    When you pick a litigation attorney, make sure to find someone who has actual trial experience. Many attorneys hang up their shingle and assert that they handle "litigation", but very few actually have tried cases. In this regard, note that an attorney's "won-loss" record is much less important than the extent of trial experience. Many "litigators" settle their cases and never handle trials---for a case like this you need someone who is prepared to "go all the way", and who has demonstrated the willingness and ability to do so.

    Also, you need to be realistic about the cost of pursuing a matter such as this. Trademark litigation is expensive, and this is not the type of case that a lawyer will take on a contingency. Since a cease and desist letter did not work, you definitely need to bring suit. Perhaps the mere act of filing and serving a complaint will bring your competitor to the bargaining table, but you can't be sure. Most trial lawyers who take cases like this will require a substantial advance retainer---and you will probably be required to replenish the retainer from time to time until the case is concluded. The good news is that if you win the case, you may be entitled as a prevailing party to require the defendant to pay your attorneys fees.

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