Seattle Trademark Lawyer

STL’s previous post offered some strategies for finding the right expert witness in trademark cases. On Friday, the Las Vegas Trademark Attorney blog added a few suggestions, including the following:

“One popular online source is the online expert witness directory JurisPro. Other expert witness websites listing the credentials of various trademark experts include ALMExperts.com, expertwitnesses.com, and Intota.com.”

These are good tips. Thanks, Ryan.

For Westlaw users out there, here is another that I think is particularly worthwhile. The Intellectual Property Expert Witness Filings (IP-EW-DOCS) database contains expert reports, affidavits, deposition transcripts, and trial transcripts of expert witnesses who have testified in IP cases. This is a good way not only to identify who the quality trademark experts are, but also to learn how they have testified in previous cases. These same materials are great for those preparing to depose or cross-examine trademark experts. Westlaw can be pricey (and this is a “specialty” database that isn’t included in many plans — including my firm’s), but selective use of this resource can be well worth it. Lexis and other providers may have similar databases worth checking out. The federal court system’s PACER database, for one, offers incredible resources to anyone willing to wade through court filings and pay $0.08 per page.

Disclaimer: STL’s publisher is writing a book chapter on using experts in trademark litigation for Thomson-Reuters, the company that owns Westlaw (which may explain why I have expert witnesses on the brain). I’ve nonetheless tried not to let that influence what I’ve said here.

Expert witnesses can be hugely important in trademark cases. Particularly through survey evidence, they can help establish if a mark is generic (and hence unprotectable); that a descriptive mark has acquired secondary meaning (and therefore is protectable); that a mark has actually confused or is likely to confuse consumers with another mark; that a mark is famous; and that one user’s mark is likely to cause dilution by blurring or dilution by tarnishment. Experts also can help establish the opposite of these propositions.

So how do you find a capable trademark law expert? Here’s what I’ve come up with. First, check out trademark cases in which expert testimony has been offered. Find cases like yours. If neither the opposing side nor the court has blasted holes in the expert’s methodology, there’s a good chance they know what they’re doing. Second, ask around. The INTA list serve and other trademark law practitioners would be a good place to get some names. Third, check out the Internet. If an expert is writing and speaking on survey design, or is really shining in the area in which they would testify, that’s a good sign. Fourth, hit your local university. I’m a fan of teaching academics. If they can distill complex subjects for their students, they probably can do the same for a jury.

Once you’ve got a few names, vet the heck out of them. Check out the cases they’ve testified in. Talk to the lawyers who’ve hired them. Read what they’ve written. See what trademark lawyers think of them. Ask for references. Ask for sample expert reports. Due diligence can be time consuming. But it’s worth it. I am convinced that taking the time to hire the right expert witness up front can help you win or favorably settle your trademark case later on.

It’s amazing how often people confuse trademarks with copyrights and patents. Not an intellectual property lawyer? Not a lawyer at all? No matter. Here’s your cheat sheet:

Trademarks. The federal trademark statute, the Lanham Act, defines a trademark as “any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer’s] goods … from those manufactured or sold by others and to indicate the source of the goods….” 15 U.S.C. § 1127. In other words, it’s a source identifier. It’s the means that tells a person the cola he’s drinking comes from the Coca-Cola Company. That way, if he likes what he’s drinking, he’ll know where to go back for more. The owner of a trademark is protected against infringement, which occurs most often when a later-adopted trademark is confusingly similar with an earlier-adopted trademark. In the United States, trademark rights spring automatically by using the mark in connection with a good or service. Registration is not required, though doing so provides the user additional benefits. A trademark lasts forever, as long as it is in use.

Copyrights. A copyright is the bundle of rights an author gets when she creates an original work that is “fixed in any tangible medium of expression” that can be “perceived, reproduced, or otherwise communicated.” 17 U.S.C. § 102(a). Such works include literary works, sound recordings, and computer programs, among others. When an author creates an original work, such as a Web page, copyright law gives the author the exclusive right “to reproduce the copyrighted work in copies…”; “to prepare derivative works based on the copyrighted work”; “to display the copyrighted work publicly”; and to authorize others to do those things. Other rights exist for other kinds of works, such as the exclusive right to perform an original piece of music. These rights exist the moment the work is created. Like trademarks, registration is not required, but registering a work gives the author important benefits. New copyrights generally last 70 years after the author’s death. 17 U.S.C. § 302(a). After that, the work becomes part of the public domain and copying is allowed.

Patents. Finally, a patent grants the inventor of a novel, non-obvious, and useful invention the right “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” 35 U.S.C. § 154(a)(1). There are three types of patents: utility patents (for new useful processes), design patents (for new ornamental designs for an article of manufacture), and plant patents (for new varieties of plants). A new patent owner generally can enjoy monopoly rights for 20 years from the date the patent application was filed, after which time the invention becomes part of the public domain and can be used by anyone. This is intended to encourage innovation by giving the patent owner the temporary ability to cash-in on its exclusive rights in exchange for disclosing the invention and eventually allowing others to use it for free. Registration is required; an inventor gets no rights until they are conferred by the federal government.