Trevor Little

Last November, we reported that the projected number of US trademark litigation suits for 2016 would represent the lowest in more than a decade. While the final number – 3,587 – was marginally higher than projected, the number of litigation filings was indeed at its lowest since 2001. As we enter the second half of 2017, it appears that the downward trend is continuing into 2017 and looks set to be a new record low.

The latest available data from IP analytics firm Lex Machina reveals that 1,611 trademark litigation cases have been filed in 2017 to date – 759 in Q1, 761 in Q2 and 91 so far in the third quarter. As such it predicts that, by year end, 3,329 filings will be observed – representing the lowest total since the turn of the century.

Trademark cases filed in the US by year are as follows:

*2017 number is a projection – at time of writing 1,611 cases have been filed in the year to date

While the final number could, of course, end up higher, last year Lex Machina’s predicted final total was broadly accurate (the company projected 3,529 cases by year end, while the final tally was 3,587). Therefore it appears likely that the general downward trend that commenced in 2010 will continue (the main exception in the past seven years being 2014, when Lex Machina explains, a third quarter spike “was driven by a flood of cases filed in the District of Minnesota against the National Football League, generally by former players over usage of their likeness”).

This picture is in contrast to growth trends in copyright and patent litigation. While the number of copyright suits fell in 2016, this followed six consecutive years of rising numbers – and 2017 is expected to bounce back to 2014 levels. Meanwhile, patent filings have been a little more volatile; after rising between 2009 and 2013, numbers fell in 2014, bounced back in 2015 and fell again in 2016. 2017 is expected to register a modest rise on 2016’s final tally.

Back in the trademark realm, at court level these falling numbers mean that, in 2016, the Central District of California and Southern District of New York – the courts with the most trademark cases over the past decade – have registered 10 year lows in terms of trademark cases. While the Central District of California retained the top spot in 2016 (with 488 cases filed), the Southern District of New York was surpassed by the Southern District of Florida and Northern District of Illinois in 2016. Last year, then, the top five courts for trademark actions were the Central District of California (14% of overall trademark cases), the Southern District of Florida (10%), the Northern District of Illinois (7%), the Southern District of New York (7%) and Northern District of California (4%).

So what does downward trend practically mean? Unless infringement levels are falling (and there is no data around to suggest that is the case), it appears that rights holders are seeking alternative means of resolving disputes, taking a more conservative approach to litigation spend. From a strategic point of view, if infringement is being effectively tackled in other ways, then the fall shouldn’t be a concern. It could be a sign that brand owners – and their external counsel partners – are merely seeking alternative ways to fight infringement. In our recent Global Trademark Benchmarking Survey, private practice professionals were positive about likely future workloads – when asked how optimistic they were with respect to the level of trademark client referrals in the coming year, 27.9% stated they were ‘very optimistic’ and 67% were ‘optimistic’. Therefore, the expectation is that work will continue to flow from corporate clients.  

However, to take a glass half empty perspective, it could mean that a more conservative approach to litigation and enforcement spend results in some infringements are not being fought to the degree that they previously would have been. If this means that some are going unchecked, it would be a concern. And for law firms this means that competition for big ticket litigation work will continue to intensify.

As to who is currently handling the most work, the top five firms by trademark cases are as follows:

2016

2017 (year to date)

Law firms representing plaintiffs:

Law firms representing plaintiffs:

1 - The Ticktin Law Group

2 - Stephen M Gaffigan

3 - Greer, Burns & Crain

4 - Nexio

5 - Kilpatrick Townsend & Stockton

1 - Greer, Burns & Crain

2 - Stephen M Gaffigan

3 - Banner & Witcoff

4 - Johnson & Pham

5 - Rutan & Tucker

Law firms representing defendants:

Law firms representing defendants:

1 - Kilpatrick Townsend & Stockton

2 - Espinosa | Trueba

3 - Greenberg Traurig

4 - Wentovich Law Offices

5 - Sheppard Mullin Richter & Hampton

1 - Fish & Richardson

2 - Davis Wright Tremaine

3 - Kilpatrick Townsend & Stockton

4 - Greenberg Traurig

5 - Duane Morris


Ultimately, the downward trend is a gradual one – filings are not falling off a cliff. However, 2014 notwithstanding, it is a fairly consistent slide. In our benchmarking survey, more than two-thirds of law firms noted that clients had required additional levels of support and service over the previous year. Expect this to continue, with firms that offer high-level strategic advice and innovative legal approaches, alongside traditional litigation services, to be the ones that prosper.  

The impact of budgets and resourcing on enforcement efforts will be the focus of discussion at this year’s Managing Trademark Assets, held in Chicago on October 17. For more information, visit the event website here

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