Selecting and employing expert witnesses in US trademark cases

By Louis Pirkey and Jered E Matthysse

Whether to use an expert witness is one of the more important questions that a trademark practitioner can ask his or her client. The answer will depend on a variety of factors, including the issue at hand and where the case will be heard

Trademark law can be confusing. Each of the 13 federal circuit courts has its own list of non-exclusive likelihood-of-confusion factors to be analysed by a judge or jury, ranging from just six factors in the Eighth and 10th Circuits to a whopping 13 in the Federal Circuit. Numerous other factual issues can present themselves in trademark cases, such as whether a mark has become generic, economic analyses of lost sales and the distinctiveness or fame (or lack thereof) of a mark. Expert witnesses can provide valuable assistance to judges and juries in evaluating these issues, and can help to lay a foundation for your case.

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Issue 74