How to Avoid Trademark Infringement, Lost Profit, and Brand Damages
It's Friday morning. Instead of enjoying your usual cup of coffee with today's newspaper, you're reluctantly reading something new: Legal papers. You're being sued for trademark infringement, and all you can think is, "How much is this going to cost me? How will this affect the business moving forward?"
Trademark infringement lawsuits have many moving parts. Each case must be evaluated based on its own facts, circumstances, and local laws.
The good news? There is a strong likelihood you will settle before ever reaching court. Contrary to popular belief, most cease and desist letters do not lead to litigation. Proceeding to trial is an expensive process most parties would prefer to avoid if possible.
Being Sued for Trademark Infringement Damages
Should a resolution be identified to the complainant’s satisfaction, all charges will be dropped. But what if you, the defendant, don't want to roll over and comply?
Assuming the plaintiff isn't Microsoft (although there are many examples of the little guys beating the big guys in trademark law), you may want to challenge that complaint in court. But you will first need to be aware of all the potential costs that could be incurred. For the remainder of this article, we'll discuss those costs, along with how to best avoid them in the first place.
The Costs Involved
When entering a trademark infringement case, there are three categories of costs to be aware of
Profits unjustly incurred by you
Profits lost by the plaintiff
Actual damages incurred by the plaintiff
Your opponent (the plaintiff) is trying to prove that you (the defendant) used their trademark to convince others that your offerings were associated with, or sourced from, their offerings in a manner that was harmful. In most cases, the basic goal is injunctive relief.
It's important to note the legal system is prudent in regards to rewarding trademark infringement damages. The rewards can not be punitive and must not benefit the plaintiff more than is required to repair the damage. However, damages canbe recovered if the burden of proof is met.
If the plaintiff has successfully established that they have incurred damages, they can seek to recover any profits you made from using the mark (minus the expenses they would have incurred to earn said profits). Information from discovery helps the owner prove the infringer’s profits. An economic expert calculates profits and confirms that defendant only deducted reasonable costs from its claimed variable operating costs.
2. Actual Damages
Alternatively, a party can be awarded actual damages if they have proven customer confusion resulted in either a). Economic loss or b). Unjustly enriching the infringer. Actual damages fall into three categories:
Lost Profits: Measuring lost profits involves calculating the revenue the owner would have earned if not for the infringer’s actions, less the variable operating costs that would have been incurred to earn those revenues. Economic experts perform this analysis by considering:
Plaintiff’s manufacturing and marketing capability to absorb production increases
Demand for the product sold under the trademark
Absence of acceptable noninfringing substitutes
The profit plaintiff would have made
Loss of Goodwill: Estimating loss of goodwill requires comparing the value of the owner’s goodwill before and after the infringement. Comparative data, like the plaintiff’s drop in market share or impact measured by consumer surveys, is assessed by economic experts to calculate damages.
Corrective Advertising Costs: Finally, the plaintiff may garner corrective advertising reimbursement. Corrective advertising costs can only occur in a market where the plaintiff and defendant are direct competitors. Again, economic experts can review costs for similar types of advertising to arrive at a fair number.
3. Reasonable Royalty
Finally, the third type of trademark infringement damage that can be awarded is a reasonable royalty. This number is calculated based on the "reasonable value" of the licensed trademark in question. The reasonable royalty rate is determined by constructing a hypothetical negotiation for licensing the trademark between the parties at the time infringement began.
Using these factors, the expert reaches a royalty expressed as a percentage of defendant’s sales (e.g., 5 percent reasonable royalty), a per-unit amount (60 cents per subscription) or a flat sum. That number is then applied to the defendant’s infringing sales to derive a damages figure.
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