Trademark Infringement and Related Rights: The Enforcement Landscape

69 questions on trademark infringement and related rights, answered and cited by the UpLaw editorial team.

• Can a false advertising claim proceed against a label that complies with FDA regulation?
• Can a famous-mark owner recover money for dilution?
• Can a parody defeat both infringement and dilution claims?
• Can a trademark registration be cancelled in federal court?
• How did the Bad Spaniels dog toy case reset the expressive use doctrine?
• How do counterfeiting remedies differ from ordinary infringement remedies?
• How does a court decide whether a trademark case is exceptional for fee-shifting?
• How does an owner build documented differences into U.S. products?
• How does Customs recordation help a brand owner?
• How does the ACPA measure bad-faith intent?
• How does the TDRA balance famous-mark protection against free expression?
• How famous must a mark be to qualify for federal dilution protection?
• How far does the Lanham Act reach outside the United States?
• How low is the material-difference threshold for gray-market goods?
• How should a brand choose between the TTAB and federal court?
• Is a trademark owner without a registration defenseless?
• Is trademark counterfeiting a federal crime?
• Must a plaintiff prove willfulness to recover an infringer's profits?
• What are gray-market goods?
• What are passing off and reverse passing off?
• What are the six blurring factors under the TDRA?
• What are the two prongs of Lanham Act Section 43(a)?
• What civil remedies are available for trademark counterfeiting?
• What defenses attack the validity of the mark itself?
• What does Abitron mean for a brand policing a global market?
• What does an effective trademark enforcement program look like?
• What does it mean that Section 43(a) is the statute's Swiss Army knife?
• What equitable defenses can defeat a trademark claim?
• What is a Schedule A case?
• What is classic descriptive fair use?
• What is contributory trademark infringement?
• What is dilution by tarnishment?
• What is ex parte seizure in a counterfeiting case?
• What is nominative fair use?
• What is the difference between an expressive use and a source-identifying use?
• What is the Lever rule?
• What is the limited-area defense?
• What is the practical significance of the Dastar limit?
• What is the Rogers test?
• What is the strategic significance of pleading both Section 32 and Section 43(a)?
• What is trademark counterfeiting?
• What is vicarious trademark liability?
• What makes statutory damages so valuable against counterfeiters and cybersquatters?
• What makes the ACPA's in rem provision so important?
• What must a false advertising plaintiff prove under Section 43(a)(1)(B)?
• What remedies can a successful trademark plaintiff obtain?
• What role does intent play across trademark enforcement theories?
• What three features make dilution narrower than it first appears?
• What two procedural innovations make the ACPA formidable?
• What works has the Rogers test protected?
• When can a brand owner stop genuine gray-market goods?
• When is a false advertising statement literally false versus misleading?
• When is an online marketplace liable for counterfeit listings?
• When should a brand use the UDRP instead of the ACPA?
• Where can a trademark dispute be brought?
• Where did the idea of trademark dilution come from?
• Who has standing to bring a Lanham Act false advertising claim?
• Why did Congress enact the Anticybersquatting Consumer Protection Act?
• Why did Congress rewrite the federal dilution statute in 2006?
• Why do brands focus enforcement on platforms rather than individual sellers?
• Why does dilution usually accompany rather than replace a confusion claim?
• Why does the Lanham Act reach conduct beyond selling competing goods?
• Why does tolerating infringement weaken a trademark?
• Why do registered mark owners still plead Section 43(a)?
• Why do state dilution statutes still matter?
• Why is an injunction usually more valuable than damages in trademark enforcement?
• Why is Customs recordation described as the best value in trademark enforcement?
• Why is the fame requirement described as a wall?
• Why is the location of "use in commerce" now a threshold issue?