Blog ➥ Category

Published September 15, 2023

Catherine Cavella, ESQ.

An idea is a beginning. Ideas open doors and shape the future. You need to protect those ideas and preserve their value to you and your business by establishing intellectual property protection (i.e. trademarks, copyrights, and patents). Establishing this protection, however, isn’t the end of the IP journey.

 

Intellectual property enforcement ensures others aren’t infringing upon your work without consequences, but it doesn’t guarantee they won’t try. Trademark infringement, copyright infringement, and patent infringement are rampant in the modern world. Technology allows bad actors (and even those ignorant of their mistakes) to reproduce the work of others and sell it as their own, often too easily.

 

So, are you doing enough to not only POWER YOUR IDEAS® but also preserve and protect them?

 

Cease and Desist Letters

One of the first steps in any enforcement case is a Cease and Desist letter. We frequently draft and send these on behalf of clients as a warning to infringers about the legal consequences of their actions if they don’t stop immediately.

 

As we’ve noted, a cease and desist letter does not itself hold legal power. This letter is a simple but important predecessor to further legal action. We will handle the letter process and the follow up. Sometimes the infringer will stop after receiving a Cease and Desist letter. If the infringement does not stop, we can help you decide if it makes sense to proceed with litigation to make them stop (called an “injunction”). If the infringement that already took place was damaging enough, you might decide to bring a lawsuit for damages.

 

Patent Trial and Appeal Board; Trademark Trial and Appeal Board

The Patent Trial and Appeal Board (PTAB) is one way to challenge a competitor’s patent. An arm of the US Patent and Trademark Office (USPTO), PTAB specifically handles cases of patentability. When a party challenges a patent, an inter partes review takes place to review the validity of the patent. (Inter Partes just means “between the parties.”)

 

These reviews require the petitioner(s) (the one challenging the patent)  to prove that further legal action (such as litigation in federal district court) would succeed in having a patent canceled. To survive PTAB review, patent holders need to defend their work and prove it is sufficiently unique and original and that its claims are indeed patentable.  

 

Like the PTAB, the Trademark Trial and Appeal Board (TTAB) is the USPTO’s review board for trademark registrations. Anyone who wishes to challenge a registered trademark may bring a Petition for Cancellation. If they wish to prevent a trademark application from being registered, they can bring a Notice of Opposition. The trademark owner then must defend its right to the trademark. 

 

These cases often cost thousands of dollars to defend, so it’s important to be prepared and get ahead of such issues as soon as they arise. If you believe an issued patent or registered trademark should not have been granted or is causing you harm, you may be able to bring a challenge.

 

Federal Litigation

Another option to enforce your trademark, patent or copyright is federal litigation in the United States District Courts. If you need an injunction (a court order stopping the infringing acts) or damages (a monetary award reimbursing you for the harm), then you’ll want to pursue federal litigation. The PTAB and TTAB can only invalidate patents and trademark registrations. They cannot address infringement or issue monetary awards.

 

The Internet is full of scary statistics about the cost of IP litigation in federal court. But the average cost statistics are skewed high because of the cases brought by deep pocket IP holders taking cases all the way through trial and appeals, with both sides using Big Law law firms that charge top dollar and assign armies of attorneys and paralegals. 

 

In our experience, most cases settle before trial, and costs can be kept lower by working efficiently, narrowing focus and leveraging legal assistants and paralegals where possible. Many smaller cases are resolved for under $50,000. Much depends on the strengths and weaknesses of the case and the other side’s confidence in their case. 

 

Also critical is the amount at stake. If you have $3 million at stake, it makes sense to invest more in your case. If you have $200,000 at stake, it makes sense to invest less. At IP Works Law, we do not create “one size fits all” solutions.

 

At IP Works Law, we strive to ensure your litigation case aligns with your goals (including your budget) and to keep you informed so you know what to expect at each stage. Our team has experience at the USPTO tribunals and the federal courts and works with parties to either pursue actions against infringement or to defend against claims of it. Contact our office for a conversation about all the options available to POWER YOUR IDEAS®.

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Since 1992, Catherine Cavella, Esq. Her focus on Trademark Law and Copyright Law for the last few decades gives her deep insights into the fundamental principles behind the rules. Catherine regularly writes about new developments in trademark law, copyright law, and internet law.