Page 19 - Intellectual Property Disputes

registration), different parties can permissibly use the same mark if there is no geographic overlap in
their use of such mark. Federally registered marks have a nationwide geographic scope and cannot be
used by multiple parties without a valid license.

With respect to damages, Section 1117 of the Lanham Act states that a plaintiff shall be able

"to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs
of the action. The court shall assess such profits and damages or cause the same to be assessed
under its direction. In assessing profits, the plaintiff shall be required to prove defendant’s sales
only; defendant must prove all elements of cost or deduction claimed. In assessing damages, the
court may enter judgment, according to the circumstances of the case, for any sum above the
amount found as actual damages, not exceeding three times such amount. If the court shall find
that the amount of the recovery based on profits is either inadequate or excessive the court may
in its discretion enter judgment for such sum as the court shall find to be just, according to the
circumstances of the case. Such sum in either of the above circumstances shall constitute
compensation and not a penalty. The court in exceptional cases may award reasonable attorney
fees to the prevailing party." fn 27

Although the Lanham Act gives trademark owners the right to recover the defendant’s profits as well as
the owner’s actual damages, the owner’s recovery is "subject to the principles of equity." fn 28 In essence,
this means that actual damage and disgorgement awards in a single case may not be duplicative. Further,
if a new claimant seeks an award of damages against an infringing defendant based on the same act or
course of conduct that gave rise to an earlier damage award against the same defendant, the court will
address equitable considerations.

Trademarks may be subject to what is commonly known as reverse confusion, fn 29 which occurs when
consumers are likely to mistakenly believe, usually as a result of widespread advertising or promotion
by the infringer, that the trademarked products are actually those of the infringer. fn 30

A suit for trademark dilution may be available under federal or state law. Dilution lawsuits often are
between two parties that do not compete with each other. Nevertheless, the accused party is alleged to
have (a) disparaged the mark or (b) diminished the value of the mark. Regardless of legal distinctions
between dilution and infringement outside the scope of this practice aid, remedies for state trademark
dilution are similar to remedies under the Lanham Act for registered trademark infringement (15 USC

fn 27 Commerce and Trade, USC 15, Section 1117.

fn 28 Id.

fn 29 15 USC 1125 states the following:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name,
symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or
misleading representation of fact, which— (a) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person, or (b) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable
in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

fn 30 Bryan A. Garner, ed., Black’s Law Dictionary, Eighth Edition (St. Paul, MN: West Publishing Co., 2004), 320.

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