The most “intense” client relationship and “squirrelly” witnesses - observations from Trademark Litigation: Practical Strategies

Last week, World Trademark Review hosted the Trademark Litigation: Practical Strategies conference in New York. The event benefited from a diverse, enthusiastic mix of attendees, providing unique insights on how to maximise the chances of success in litigation actions. Here are some selected highlights.  

‘Do we care enough to litigate?’

The opening session explored the considerations that come into play when deciding whether litigation is the right option. To begin that process, a crucial question that should be asked, according to Amy Span Wergeles, senior trademark counsel at Henkel Corporation, is “do we care?”. She explained that if the trademark being infringed is for a product that the company doesn’t spend much money on, or if the brand doesn’t generate significant sales, then going forward with costly litigation action often doesn’t make sense - a decision “that is sometimes difficult to explain to the business” but is ultimately worthwhile. David Lilenfeld, legal counsel at Evocap, agreed, but emphasised that those considerations cannot only be quantified by how much money the trademark makes today: “When it comes to considering the sales or revenue for a particular brand, I find it is also driven by the hopes and prospects for the brand. So a product may not have gained momentum yet, but the client may have a lot of expectations for it in the future. It is therefore critical to weigh that up as well.” Equally critical is an understanding of internal skillsets, all the panellists agreeing that, when deciding if or when to draft in outside counsel, self-awareness of gaps in knowledge is critical. As Lilenfeld noted: “There are companies with very highly skilled in-house counsel that don’t always need outside counsel. However, most companies do not have that talent pool and those internal counsel need to realise their limit on the talent they have available to hand. Don’t be afraid to admit you need help.”

Putting the fun into preliminary injunctions

“I love preliminary injunctions because they’re fun,” declared Mark Puzella, principal at Fish & Richardson. Perhaps not the first sentiment that counsel have when grappling with the legal instrument, but he explained: “You get to do everything you want to do in a trial but really quickly.” His enthusiasm was not quite matched by Daniel McKinnon, senior counsel, IP and global brand protection, at New Balance, who prefers to wield detailed complaints in a bid to encourage speedy resolution:  “Too many plaintiffs file complaints that are almost functionary. But if you write a complaint that looks like a preliminary injunction (PI) motion in its length and substance, you get to settlement faster - at least from our experience. This approach gives you the benefit of a PI - such as a faster resolution - but it is a middle-ground approach that isn’t taken advantage of enough. So if you don’t want to commit to a PI but you are committed to a litigation, you should strongly consider filing a complaint that is more substantive than you might otherwise file. We’ve had countless cases where that has resulted in, essentially, an agreement to stop. Litigation is a game of trying to find out who wants it more - when you file a complaint that is lacking in detail and substance, it may survive a motion to dismiss but it will not send a message to the other side. This middle-ground approach, on the other hand, does just that.” Where a PI is deemed the preferred route, as well as the financial outlay, Puzella noted that an emotional investment is also necessary: “When you’re working with a client on a PI, it is the most intense client relationship you can experience. You come out the other side with a great relationship, but that’s because, in a legal sense, you just went to war. You will be talking every day, sometimes for several hours, so it’s quite a commitment - both in terms of monetary cost and also the mental cost. That latter element is often not sufficiently accounted for on the business side.”

Preparing for the stand

When a case proceeds to trial, canny evidence management is key and an early afternoon session focused on practical approaches to gathering evidence, conducting surveys and managing witnesses. With respect to the latter, it is important that internal company witnesses are carefully managed, with attention paid to their personality quirks. Moderator David Elkins, partner at Squire Patton Boggs, noted that, from his experience, “sales people can often be very difficult and squirrelly” due to them “promising the moon and stars” for their testimony. Therefore, counsel should ensure that such witnesses “stay focused and testify on what they have personal knowledge on, nothing more”. As a way to encourage compliance and sharpening testimony, he explained that videoing a mock testimony can have “a surprisingly big impact” on speeding up improvement in a witness, primarily because they can view first-hand possible issues. Turning to effective evidence collection, another tip provided by Charles Jeffrey Duke, general counsel for Zippo Manufacturing Company Inc, is to not rely on stakeholders in the upper echelons of a company: “When I need documents for a trademark case, I personally go to all the key people, not just the VP of certain departments. I find that asking the actual people ‘in the trenches’ and explaining to them why certain documents are so important, gives them a sense of the urgency that may not otherwise exist.”

The appeal of an appeal

The decision on whether to pursue an appeal is a significant one. The ideal situation is to decide whether you would move forward with an appeal before it even becomes an option (as this can influence the approach to the case from outset). This can then play into decision-making over where to pursue a case and possible subsequent appeal. Hugh Hansen, director at Fordham Intellectual Property Law Institute, explained: “With the TTAB, it is all paperwork, almost never an oral argument. That means the more basic things you may want to convey in a case you often cannot do in a TTAB case. But in a district or appeal court, if there is blood on the ground, the court wants to find out who did it. An appeal court doesn't tend to be interested in the direction of trademark law, it wants to find who is right in a particular situation. Therefore, if you have a good guy/bad guy situation, then the district court or appeal court is not a bad place to go over the TTAB.” Of course, while it is desirable to strategise for appeals from outset, this is not always possible, as Alica Del Valle, head of intellectual property at Airbnb, explained: “At the beginning, you may not feel that this is the type of case that is worth taking through to an appeal. But you can end up changing your mind - and vice versa. Furthermore, you don’t always control this decision, as there are so many different internal business issues that will happen along the way that can change the attention paid to the case and the desire for a return of investment.” For counsel, then, the key is to be nimble and ready to change strategic direction.

These are just a few takeaways from a busy day of litigation-focused conference sessions. More detailed coverage of the event, including practical insights provided by members of the judiciary and three one-on-one interviews with high profile in-house counsel, will be presented in issue 62 of World Trademark Review.

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