Lanham Act Lawyers

Experienced Federal Litigation Attorneys Representing Businesses in Trademark Infringement and False Advertising Claims

The Lanham Act is a federal law dealing primarily with trademarks. When most people think of trademark litigation, trademark infringement comes to mind. Certainly, this is a large part of what the Lanham Act covers; however, the scope of the Lanham Act is quite broad in that it also covers trademark dilution and false advertising. Under the Lanham Act, courts can restrict the importation of goods that violate a trademark and can issue injunctions and award monetary damages in cases involving trademark dilution and false advertising. If you received a cease-and-desist letter regarding alleged trademark infringement, trademark dilution, or false advertising, it is imperative that you reach out to a federal lawyer experienced in Lanham Act claims.

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Oberheiden, P.C. is nationally recognized for skillfully handling all types of claims under the Lanham Act. While these cases tend to be extremely complex and present very high stakes for all parties involved, our dedicated team of federal lawyers possesses unrivaled knowledge and skill in effectively resolving claims related to the misuse of trademarks. The team of Lanham Act attorneys at Oberheiden, P.C. consists of several senior attorneys who previously held high-ranking positions within the federal government, giving our firm inside knowledge of how these cases proceed and how to efficiently resolve them.

Dr. Nick Oberheiden

Founder

Attorney-at-Law

John W. Sellers

Former Senior Trial Attorney
U.S. Department of Justice

Local Counsel

Joanne Fine DeLena

Former Assistant U.S. Attorney

Local Counsel

Joe Brown

Former U.S. Attorney & Former District Attorney

Local Trial & Defense Counsel

Amanda Marshall

Former U.S. Attorney

Local Counsel

Aaron L. Wiley

Former Federal Prosecutor

Local Counsel

Roger Bach

Former Special Agent (OIG)

Michael Koslow

Former Supervisory Special Agent (FBI)

Chris Quick

Former Special Agent (FBI & IRS-CI)

Kevin M. Sheridan

Former Special Agent (FBI)

Ray Yuen

Former Supervisory Special Agent (FBI)

Dennis A. Wichern

Former Special Agent-in-Charge (DEA)

The Lanham Act Generally

The Lanham Act was originally signed into law by President Harry Truman on July 5, 1946. The intent of the Act was to create a national trademark registration system and to provide protection to those who secured a trademark. Interestingly, the Lanham Act also provided reasonably-priced childcare for families during World War II, which has since served as a model to lawmakers in developing more current policies. However, the main thrust of the Lanham Act deals with trademark creation and enforcement.

A trademark is a recognizable sign, design, or expression that identifies the source of a product or service. Simply put, the Lanham Act covers what parties must do to obtain a trademark and provides remedies in the event another party infringes upon the trademark holder’s rights. Since the passage of the Lanham Act, courts have continued to uphold the rights of trademark holders, including in a 2017 opinion holding that a portion of Section 2(a) of the Lanham Act prohibiting the federal registration of potentially disparaging trademarks and service marks violated the Free Speech Clause of the First Amendment.

Putting aside the requirements to obtain a trademark, the Lanham Act provides detailed procedural mechanisms by which parties who believe another infringed upon their rights can pursue relief from the courts. There are a few ways in which claims under the Lanham Act can come up:

Trademark Infringement

Trademark infringement is the unauthorized use of another’s trademark. When asked to resolve a trademark infringement case, courts consider whether the party alleged to have committed trademark infringement likely caused confusion about the product’s origin. This “likelihood of confusion” standard requires courts to consider the following:

The strength of the mark;
The proximity of the goods;
The similarity of the marks;
Evidence of actual confusion;
The similarity of marketing channels used;
The degree of caution exercised by the typical purchaser; and
The defendant’s intent.

Thus, whether trademark infringement exists is a heavily fact-based inquiry. The use of a trademark on an entirely unrelated good will not give rise to a violation of the Lanham Act. For example, the term “Mac” is used by both Apple and Estee Lauder. This is not trademark infringement because a consumer would not likely believe that Apple also makes MAC cosmetics. However, the use of trademarks in products that share certain similarities can give rise to an infringement suit.

False Advertising and Unfair Competition

The Lanham Act also allows for businesses to bring a case against another business for false or misleading advertising. More specifically, Section 43(a) of the Lanham Act prohibits someone from using 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 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.

While this is hardly a model of clarity, Section 43(a) prohibits one business from making any statement that could lead to confusion about their product or another’s product. It also precludes a business from making statements that may lead a consumer to believe the business’ products are endorsed or associated with another company.

However, to prove a false or misleading advertising claim under the Lanham Act, a party must establish each of the following elements:

The other party made a false or misleading statement of fact;
The statement was used in a commercial advertisement or promotion;
The statement was deceptive or was likely to deceive in a material way;
The statement was made in interstate commerce; and
The statement caused or is likely to cause competitive or commercial injury to the other party.

Trademark Dilution

Trademark dilution is the term used to describe the unauthorized use of a trademark that is likely to weaken the distinctive quality of the mark or otherwise harm the interests of the owner. Unlike an infringement action, trademark dilution can occur when a company uses a well-known trademark in marketing an unrelated good. The elements of a trademark dilution claim require the plaintiff to prove the following:

The plaintiff’s mark is famous;
Another party used the plaintiff’s mark after it became famous;
The other party’s use of the mark was for commercial purposes; and
The other party’s use of the plaintiff’s mark likely caused dilution.

Often, significant litigation surrounds whether a mark is famous. In evaluating whether a trademark is famous, courts will consider the following factors:

The duration, extent, and geographic reach of advertising and publicity of the mark;
The amount, volume, and geographic extent of sales of goods or services offered under the mark;
The extent of actual recognition of the mark; and
Whether the mark is registered.

At Oberheiden, P.C., our dedicated team of Lanham Act lawyers have notable experience litigating these claims in federal court.

Frequently Asked Questions:

What is the statute of limitations under the Lanham Act?

Unlike many other civil causes of action, there is no statute of limitations for claims brought under the Lanham Act. However, those facing the Lanham Act claim may assert the legal defense of laches. Essentially, the laches defense is based on a plaintiff’s unreasonable delay in bringing their claim, which resultingly caused the defendant prejudice. Thus, while there is no strict timeframe for filing a lawsuit under the Lanham Act, the longer a plaintiff waits to file their claim, the greater the chance the defendant will have a laches defense, provided the defendant can establish that they suffered prejudiced due to the plaintiff’s delay.

What Is at Stake in a Lanham Act Case?

A successful Lanham Act claim most often results in the court ordering injunctive relief. This may include legally prohibiting the defendant from continuing their use of the mark at issue or preventing the importation of goods bearing the mark. However, in certain cases, courts will also order other remedies. For example, damages may include disgorgement of the defendant’s profits, the plaintiff’s costs in bringing the lawsuit, actual damages suffered by the plaintiff, and attorney’s fees in exceptional cases.

Contact Oberheiden, P.C., to Schedule a Free Consultation with a Federal Lanham Act Lawyer

If you recently received word that another party believes you have infringed or diluted their trademark, or they’ve alleged you engaged in false advertising or unfair competition, contact the federal Lanham Act lawyers at Oberheiden, P.C. At Oberheiden, P.C., we’ve assembled a team of veteran attorneys well-versed in defending businesses from claims brought under the Lanham Act. Our attorneys are standing by to speak with you about your case and can immediately begin developing a comprehensive defense strategy. To learn more, and to schedule a free consultation, call Oberheiden, P.C. at 888-680-1745. You can also reach our attorneys through our online contact form.