May 22, 2021 Kevin Lawrence

Mounting an Aggressive Defense Against Aggressive Trademark Protection

Stories from The Case Files of Rogers Counsel

So, I Can’t Use That In My Marketing? Helping a Financial Services Business Mount an Aggressive Trademark Infringement Defense.

The client, a small business owner providing financial and retirement planning services for high-wealth individuals, called us with an issue: he was being sued for using trademarked language in his marketing copy. The basics were clear: the client was in fact using the exact trademarked marketing tagline and the competitor, as the trademark owner, appeared to have a solid case for extracting damages.

We started our research by looking into the trademark owner, their background, history and propensity to litigate. We found that the competitor was willing to spend freely to aggressively protect its trademarks and was engaged in multiple lawsuits at the same time, including one against a large, deep-pocketed bank. This was not encouraging for our client, who was hoping to be able to settle the complaint without incurring large damages and/or legal fees.

The next step in our research was reviewing the trademark itself, looking at the original application, dates and subsequent usage.  This turned out to be pivotal to developing a defense strategy and offered a glimmer of hope for our client.  During the process, we discovered a number of significant inconsistencies, timing issues and possible deception with the initial filing and usage of the trademark. This became the basis of our aggressive defense to help our client avoid a possible six figure bill. 

Once we assembled our defense, we presented not only the findings of our research, but our intention to challenge the validity of the trademark itself. At this point, the opposing counsel realized that our counter attack was not only valid and jeopardized their case against us, but it also put all of their other trademark cases at risk, with the most important and egregious infringement suit being against the deep-pocketed bank. 

With this creative and aggressive approach to defense, we created a path for the opposition to salvage the larger case against the bank by negotiating a modest settlement with our client. We turned what appeared to be a clear-cut trademark infringement lawsuit into an aggressive defensive strategy, turning the tables on the opposition and saving our client significant expenses.

Rogers Counsel offers a complete range of intellectual property legal services from protecting your innovations, designs and proprietary information, to mounting a defense against aggressive trademark protection.