IP Litigation

If you have a trademark dispute, an experienced trademark lawyer licensed to practice law in the U.S. can provide you or your business with legal advice about many crucial legal issues. Contacting a reputable trademark attorney can avoid thousands of dollars in legal costs and potential liability due to infringing another’s intellectual property rights. An experienced attorney can help you make the following decisions:

• Determine whether your trademark can be legally protected or enforced either through common law rights or through a trademark registration
• Determine what your enforcement goal should be–to stop the other side from using your trademark, monetary damages, or seizure of the offending goods.
• Determine how to quickly resolve the trademark dispute if a company as asserted its trademark rights against you or your company
• Determine how aggressive your approach should be: whether to start with a cease-and-desist letter or more aggressive action if you are the rights holder.
  Determine whether first to enforce your trademark rights at the USPTO TTAB or file opposition or cancellation proceedings at the same time a trademark infringement suit if brought in federal court

With our deep experience in both the subject matter of trademarks and in the various venues that oversee trademark disputes, we are specially equipped to resolve clients’ trademark issues. If you believe you may need a trademark lawyer to manage a potential trademark or intellectual property matter, please contact us for a consultation.

Trade dress can be an excellent alternative to other forms of intellectual property protection, such as a utility patent, that might not be available in some instances. It is essential to understand how to protect and enforce trade dress before making any business decisions. For example, one can enforce trade dress rights in litigation. However, it is easier to do if there is a registration for the trade dress. However, not all types of trade dress are treated equally under the law. Courts view “product packaging” trade dress differently from “product configuration” trade dress, which is how the actual product looks. While product packaging can be “inherently distinctive” and protectable standing alone, the way a product looks is likely not protectable without showing a court “secondary meaning” evidence. In this case, secondary meaning is the public’s awareness that a particular design comes from a single source (or company). We are adept at understanding the extent of a client’s rights in a specific trade dress design. First, knowing the boundaries of a client’s rights is essential when disputes arise or if litigation is necessary.

We have experience in litigating, enforcing, and defending various trade dress disputes for clients in distinct industries, including the cosmetic industry, medical device industry, consumer products industry, spirits and wine industry, and the agriculture/farming industry. Before enforcing a client’s rights in a trade dress infringement scenario, we can obtain formal trade dress protection by obtaining a federal trademark registration. Also, we have a good deal of experience in enforcing clients’ intellectual property rights in related legal areas that often coincide with enforcing trade dress rights, such as unfair competition, trademark dilution, misappropriation, passing off, and copyright law.

However, it may not be necessary to litigate a trade dress dispute that could be resolved by sending a cease-and-desist letter or a response to a cease-and-desist letter. Often, a misunderstanding of the extent of one party’s trade dress protection causes a conflict. A trademark attorney can help solve these problems without getting involved in extended trade dress infringement battles. Other avenues to resolve trade dress matters quickly, from canceling trade dress registrations at the United States Patent & Trademark Office to filing a motion for a temporary restraining order (TRO) in federal court.

Copyrights protect the creative works of “authors” who place their works in some kind of physical form, even if stored in computer memory. Copyright is considered an “exclusive right” and covers visual art, photography, videos and movies, music (recorded, written, and performed), sculptures, software code, and architectural works. “Exclusive rights” are rights that enable a copyright owner to stop others from using their creative works for a wide range of purposes. It is a form of intellectual property that fills a necessary gap in protection between trademarks and patents since trademarks must signify a source of goods and patents require a finding of “usefulness.” Yet, all three forms of intellectual property protection could cover one particular design. A qualified copyright lawyer can help you or your company understand what rights might be available for your specific case.

In addition to using the federal courts to enforce our clients’ rights, we use other avenues of enforcement, including the U.S. Customs and Border Protection (CBP) and the International Trade Commission to stop counterfeiting. Furthermore, we also resolve clients’ copyright problems using the Digital Millennium Copyright Act (DMCA) procedures to enforce or defend clients’ rights online. In addition to being an efficient and cost-effective law firm, we have an extensive international network of intellectual property attorneys who help us resolve our clients’ copyright infringement litigation abroad. More information on our international relationships can be found on our website at our International Associate Program page.

To successfully file and maintain a copyright lawsuit, the copyright owner must first obtain a registration at the U.S. Copyright Office. We have experience in registering copyrights and prosecuting the applications at the U.S. Copyright Office. You can find more information about registering copyrights on our Copyright Protection page.

As copyright attorneys, we are skilled at helping clients with copyright protection, enforcement, and other related intellectual property law problems in the online environment. Some situations where we have seen different types of copyright litigation arise are:

• Competitors or fraudulent ventures copy a portion or all of a client’s website, including text, photographs, forms, or page layout.
• A photographer discovers her portfolio was copied without permission and used online.
• Rights owners, or alleged rights owners, file complaints with social media platforms, such as YouTube, Facebook, Twitter, Instagram, or Snapchat, to take down infringing videos, photos, or artwork.
• Website and blog owners, social media users, or visual artists are sued by stock image rights owners, such as Getty Images, for illegal copying. The clients did not know the images were not in the public domain.
• Copyright trolls peddle in online adult movie rights and find the identities of individuals who download the videos via filing sharing services. Armed with the downloader’s identity and the specific downloaded material, the troll commences a lawsuit (usually on a contingency basis) seeking to extract a settlement from the downloader. Sometimes, the trolls place the movies on the illegal file-sharing platforms themselves to “catch” the infringer.

1. Register your copyright as soon as possible. An artist, writer, photographer, musician, or another creator must register a copyright at the United States Copyright Office to even file a lawsuit for infringement in federal district court. Additionally, to obtain statutory damages or attorneys’ fees, the copyright owner must register the particular work before infringement occurs. However, the law permits the author to pursue statutory damages and attorney fees if the author applies for copyright registration after the infringement occurs but within three months of the work’s first publication. Still, a copyright plaintiff should use extra care in bringing a lawsuit, as a defendant who wins in federal district court is entitled to seek attorney fees from the plaintiff.
2. Keep track of the opposing party’s repeated or overly aggressive copyright infringement claims. A party’s history of engaging in multiple copyright violations and litigation misconduct can also justify an award of attorneys’ fees. A party’s conduct throughout the litigation is crucial. Judicial opinions in this area of law recognize that a critical component to obtaining attorneys’ fees is the reasonableness (or unreasonableness) of a party throughout the litigation. Whether you are the plaintiff or the defendant, the best strategy is to be the most reasonable party while at the same time strongly advocating in your best interests.
3. Examine the copied electronic works (images, videos, software, documents) and determine if any copyright management information (CMI) has been altered or removed. Section 1202 of the Digital Millennium Copyright Act gives a copyright owner the right to recover attorney’s fees in cases where the infringer has intentionally removed or altered copyright management information (such as copyright notices, the author’s name, the owner’s name, the work’s title, and any watermarks). For electronic files, this information is often captured in metadata, which should be examined by an attorney with extensive experience in copyright.
4. Examine your agreement or license if you have one. Many license agreements for music, motion pictures, and visual art have terms that give artists or authors the right to recover attorneys’ fees if they are forced to litigate a copyright case. These agreements should be located and carefully examined before starting any litigation in federal district court.

Copyright lawyers and the courts look for evidence of copying to determine if infringement has occurred.

To win a copyright lawsuit, a plaintiff must prove both that:

• The plaintiff owns a valid copyright in the work.
• The defendant copyright infringer wrongfully copied the plaintiff’s copyrighted work.

These elements seem simple to prove on their face. However, showing that the two works in question have shared features is usually insufficient to prove unlawful copying. Instead, the plaintiff must show that the defendant:

• Copied material from the plaintiff’s copyrighted work (as opposed to creating it himself or copying it from another source); and
• Copied a sufficiently significant amount of copyrighted material from the plaintiff’s work so that the parties’ works are substantially similar.

With our copyright law experience and using multiple enforcement options to benefit our clients, we provide focused legal advice and fast solutions to copyright liability issues in the United States. Please contact us if you think you have a copyright issue and would like to discuss your options.

The initial stages of a trade secret dispute often move quickly, and decisive action is required since much is at stake for both sides: A company’s competitive advantage could be in jeopardy, or an individual’s freedom to be employed and to maintain their livelihood can be in danger. If possible, we often use strategies at earlier points in a case to resolve litigation involving trade secrets. We execute these strategies by litigating motions for temporary restraining orders, preliminary injunctions, motions to dismiss, and summary judgment. However, sometimes it is necessary to prosecute a trade secret lawsuit through to trial.

Trade secrets are a form of intellectual property that involves formulas, patterns, compilations, programs, devices, methods, techniques, or processes that provide a competitive advantage. Though definitions of trade secrets vary slightly from state to state, they are generally thought of as information that is not commonly known or that which cannot be “reasonably ascertained” by others. Trade secret protection is the way many businesses enjoy a commercial advantage over competitors. To be considered a trade secret, the information or data must:

• Not be generally known to the relevant business circles or the public.
• Not be readily accessible.
• Provide some sort of commercial or economic benefit to its owner. The benefit must come from the fact that the information is not generally known, not just from the data’s value.
• Be protected through reasonable steps to keep the information secret. The definition of what is “reasonable” varies from jurisdiction to jurisdiction, as do other areas of trade secret law. Many lawsuits are fought over this element.

Trade secret protection is flexible in that no registration is required (or even possible), and the scope of what encompasses a trade secret is unlimited. Therefore, a client with a trade secret misappropriation problem should seek a qualified attorney’s assistance before moving forward with litigation.

Since the federal Defend Trade Secrets Act (DTSA) of 2016, it is now possible to bring a federal claim in federal court for the theft of a trade secret. Before the DTSA was signed into law, trade secret claims had to be brought under state law, which differed—sometimes significantly—from state to state. As a result, enforcing or defending trade secret claims has become slightly more uniform. However, understanding the interplay between state and federal trade secret laws is still essential in effectively enforcing or defending a client’s rights.

Under the federal DTSA law, courts can award numerous remedies to clients if someone has stolen a trade secret. Specifically, courts can order a person or company not to violate the trade secret’s confidentiality. Furthermore, if the misappropriation is made in “bad faith,” the trade secret owner could be entitled to receive an award of royalties, damages, and attorneys’ fees.

Nardiello Law PLLC is well-equipped to represent companies and individuals in the enforcement and defense of trade secret claims in federal district and state courts. With our deep experience in intellectual property law, such as trade secret misappropriation, unfair competition, passing off, and copyright infringement, we can provide the client with efficient and effective representation.

Unfair competition is the name for a wide range of commercial torts or “wrongs” that arise with doing business. It is related to intellectual property law and is used to prevent a competitor from causing confusion in the marketplace. However, it is not only limited to protecting the market from confusion. One can also use unfair competition law to prevent competitors from adopting business tactics designed to minimize competition and hurt consumers.

• Trademark infringement
• False advertising
• Initial interest confusion
• Misappropriation and passing off
• Reverse passing off or misrepresenting the source of a product by not informing prospective purchasers who created it
• Deceptive trade or business practices, such as misleadingly conducting business that injuries consumers
• Bait-and-switch, which involves replacing a higher quality or more expensive product with a lower-cost product from a different source
• Trade dress infringement, such as copying the protected physical appearance of a product or a product’s packaging
• Breach of nondisclosure agreements
• Business libel/slander or defamation, such any written or oral forms of communication that could harm a one’s reputation in the industry
• Price discrimination
• Price fixing: Below-cost or predatory pricing, where a competitor tries to knock out its rivals by offering products at below cost and then raises prices to above-market levels after eliminating the competition

Engaging in the above activities can be illegal. In addition to representing clients in federal and state courts, we also help keep clients out of court. In this regard, we can help you with:

• Product designs
• Advertising, marketing, and promotional campaigns
• Product and services pricing
• Distribution methods and agreements
• Business models
• Industrial surveillance and espionage

In many cases, trade secret theft or misappropriation of trade secrets such as customer lists violates state and federal law. However, the information still needs to meet the following criteria:

• The information is not generally known or ascertainable outside of the owner’s organization and control.
• The owner derives independent economic value or business advantage from the information not being generally known.
• The owner makes reasonable efforts to preserve its secrecy.

These criteria can make assessing a case complex. Therefore, seeking a qualified attorney before bringing or defending a lawsuit can be crucial. Please contact us if you would like a consultation on a potential unfair competition case.

Our founder and attorney, Jason Nardiello, has represented the following businesses and individuals in unfair competition matters:

Largest Digital Camera Corporation in the World: Represented a global digital camera company in the world in securing trade dress rights in the U.S. for stylistic design elements of the camera line. The trade dress registration resulted in the client being able to stop the next largest camera companies in the world from using a similar trade dress design.

Saudi Prince: Advised Saudi Prince in assessing possible trade libel and defamation claims connected with false statements made against the client Prince alleging that he had forged certain documents. The matter was resolved favorably for the client who avoided trial.

Leading Medical Diagnostic Device Manufacturer: Litigated a product configuration (product design) trade dress case for a national medical device manufacturer whose competitor used an identical color scheme denoting specific medical devices’ sizes. The case was challenging because it was necessary to obtain evidence that the color design had become known in the marketplace as a trademark. After litigating the matter in federal court, the case was settled with the client medical device corporation successfully preventing the competitor from using an identical color scheme for the medical device product.

Global Tobacco Corporation: On behalf of an international tobacco company, we prevented a similarly sized tobacco company from using the term “PLEASURE” in advertising and promotions where the client had decades of prior use of the word.

Criminal Law Firm: Using New York’s Deceptive Trade Practices law, prevented the client’s competitor law firm from asserting rights in its trademark against the client.

Veterinary Stem Cell Companies: Advised foreign and domestic stem cell companies concerning available claims for trade libel because of a competitor stem cell manufacturer’s statements. The companies made stem cell products for veterinary/equine use. The defendant made false statements about the client’s business and ethical practices, and these statements harmed the client’s business. The case was litigated and settled on related claims to the client’s benefit.

Beef and Poultry Processor: Litigated and advised a kosher beef and poultry processing business in bringing false advertising and counterfeiting claims against the retail seller of allegedly kosher-certified meat. The retail meat seller was captured on video, replacing the client’s kosher meat product with another product believed to be non-Kosher and then selling the non-kosher product in boxes marked with the client’s trademark. The court denied the adversary’s motion to dismiss the client’s false advertising claims. We convinced the court that our allegation of replacing the client’s product with the meat of an unknown source and then selling the replaced product in the client’s branded boxes amounted to a “false statement” in advertising.

Companies or individuals encounter false advertising legal issues in several ways:

• Mislabeling – Mislabeling occurs when there are false or misleading statements regarding some aspect of the product or service. These are usually shown on product labels or packaging or in advertising. Many cases fall under this category. One example of a mislabeling issue is the “Made in the U.S.” claim when the product in question is not entirely made in the United States. Mislabeling is a severe problem because it can harm both competitors and the public.
• Misleading scientific research – Liability can arise when a business advertises its product as being safe, effective, healthy, or environmentally sound when those claims are not entirely accurate or are misleading. Problems occur when advertisements mischaracterize the research, leading to a misleading statement in advertising. Other times, the study itself could be invalid. Again, this can be a problem for both competitors and the public: it gives an undue advantage to the competitor business. It also makes consumers believe that the product has certain good qualities when it does not.
• Product disparagement and comparative advertising—this usually occurs when a competitor identifies the competitor by name and highlights deficiencies in the quality of the competitor’s product or service compared to its product or service. Sometimes, the competitor may not be mentioned by name, but enough information is provided in the advertisement to identify the referenced business. Comparative advertising can become product disparagement when the competitor knowingly makes a false statement about the competitor or the competitor’s product or service with the intent to cause harm to the business, which it could sustain in the form of lost sales or customers.

Many of these forms of false advertising occur online, whether on websites, social media pages, or blogs. False advertising that appears online can implicate other state or federal laws, so speaking with a false advertising attorney can help you develop the best strategy for enforcing or defending your rights.

False and misleading advertising can harm competing businesses as well as consumers. A competitor who falsely advertises can cause severe financial harm to a business. The false statements can be defamatory, or they can be part of a deceptive practices scheme to divert business away from a competitor. Many deceptive acts, including deceptive advertising, deceptive pricing, or false claims made in advertising, can harm consumers.

If a competitor is engaged in misleading advertising practices, the first step is to usually send a cease-and-desist letter to stop the advertiser from contributing to further harm. An attorney familiar with false advertising laws can help craft the most effective and convincing letter while avoiding developing the situation into a serious dispute.

If the cease-and-desist letter is not adequate, the next step may be to bring a claim in state or federal court for false advertising and for violating specific consumer protection laws. Many states have separate “unfair business practices” or “deceptive trade practices” laws that give a “private right of action” and can be used to obtain various legal remedies against the violator. Often, these lawsuits request an injunction, actual damages, defendant’s profits, and enhanced damages such as double or triple the dollar amount of actual damages.

Our firm’s founder, Jason Nardiello, has represented individuals and businesses in bringing and defending false advertising cases in federal and state courts.

Consumer Products and Personal Care Corporation: Represented a publicly-traded personal care products company and provided advice under federal and state law concerning the “slack-fill” of products. “Slack-fill” is the difference between the actual capacity of a container and the volume of product. After the engagement, the client successfully sold products under federal and state law guidelines.

Beef and Poultry Processor: Represented and advised a kosher beef and poultry processing business in bringing a lawsuit against a retail seller of allegedly kosher-certified products. The retail meat seller, who was also a competitor, was captured on video, replacing the client’s kosher meat product with another product believed to be non-Kosher. The court denied the adversary’s motion to dismiss the client’s claims. We convinced the court that replacing the client’s product with the meat of an unknown source and then selling the replaced product in the client’s branded boxes amounted to a “false statement” in advertising.

National Fabric Protection Service Corporation: Advised national fabric protection and cleaning service company in connection with alleged false claims made by a competitor that the competitor’s products were “all-natural” and “FDA and EPA compliant” when they were not. We sent a letter to the competitor, who then removed the false claims from advertising and from their website.

International Manufacturer of Broadband Infrastructure Components: Advised broadband electrical component manufacturer on “Made in USA” marketing program. Some of the client’s products contained sourced parts overseas, but the final product was assembled in the U.S. Using our advice, the client was able to place the appropriate markings on their products.

If you believe you may have a false advertising claim issue or are concerned about deceptive advertising practices, please contact us for an initial consultation.

Two common ways to get control of your domain name or resolve domain name theft are using either UDRP proceedings (Uniform Domain Name Resolution Policy) or litigation. In some circumstances, securing the domain name rights through a UDRP proceeding can be more effective and certainly more costly than federal court lawsuits.

A UDRP proceeding is an out-of-court process where a mark owner (whether the trademark is registered or not) can cancel or transfer another’s domain name. The complaint’s basis is that the domain name’s use would create confusion among consumers or customers or that the domain name’s purchase was an intellectual property or domain theft.

The complaining party can bring the dispute to one of several ICANN approved dispute resolution service providers, such as WIPO, the National Arbitration Forum, or the Asian Domain Name Dispute Resolution Center. The dispute over the Internet domain name is then presented to either one or three panelists who will decide whether the domain name was registered in bad faith. If the panel determines that the complainant’s rights have been violated, the domain name will be canceled or transferred. For example, if the domain name

A UDRP complaint must contain the following elements, supported by evidence in writing, for the complaint to be maintained:

1. The domain name in question is identical or confusingly similar to a mark or service mark in which the complainant has rights; and

2. The respondent (defendant) has no rights or legitimate interests in respect of the domain name; and

3. The domain name in question has been registered and is being used in bad faith.

Any trademark owner (where the term is registered or not) can start this procedure. The individual or company responding to the UDRP complaint can be located anywhere in the world. UDRP proceedings, therefore, have an extraordinary advantage in this regard compared to court proceedings since personal jurisdiction requirements found in court are not applicable in ICANN UDRP proceedings. In a UDRP proceeding, both sides present their case on paper, and the panelist(s) then decides whether the domain name should be canceled or transferred to the complainant. The proceedings are quite fast, with most parties receiving a decision within two months or so.

Another vehicle used to regain control of your domain name or stop someone from using a similar one is using the federal courts. Usually, a lawsuit is brought for trademark infringement, unfair competition, and violations under the Anticybersquatting Consumer Protection Act (ACPA), a part of the U.S. Lanham Act. However, using federal litigation is much slower than a UDRP proceeding. The cost of federal court litigation is also much, much higher. 

Personal Care Products Company: We represented a publicly-traded personal care products company in a UDRP proceeding to take back a domain name from a domain name squatter located in Korea. Our client owned the trademark registration for the words in the domain name for a particular sunscreen brand. After filing the UDRP complaint and considering the squatter’s answer, the UDRP panelist held in favor of our client, and the domain name was successfully transferred. We submitted evidence that the squatter had a history of purchasing a large number of domain names, therefore showing his bad faith in acquiring our client’s domain name without any legitimate business purpose.

Leading mobile app developer: We represented and advised a mobile app developer on strategies to acquire domain names and social media “handles” squatted by others. The domain names were crucial to the client’s branding identity.

Second-largest digital camera manufacturer: We provided advice to the second-largest digital camera manufacturer in the world concerning the use of the company’s house mark in domain names on the Snapchat social media platform. With our advice, the client was able to avoid litigation while having the infringing use terminated.

Resolving domain name disputes through a UDRP proceeding can provide the most value in certain circumstances for clients who own valuable domains. If you believe you may have a domain theft or domain dispute, please contact Nardiello Law for a consultation.