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What are the benefits of registering your trademark?

The Importance of Trademark Registration

When you decide to start a business, one of the things you consider is how to distinguish your business from other businesses offering the same goods or services as you do. You come up with a name that customers can remember and build up enough goodwill so that you are the first business they think of when they want the goods or service that you provide. You might be feeling content with your setup until you hear that there is another business with a similar mark offering the same goods and services. Now, you’re in panic mode because your mark is not registered.

What is a Trademark?

A trademark is any word, name, symbol, or device, or a combination of them, which represents your goods and services. It serves as a source identifier for your goods and services, distinguishing it from those produced by others. A trademark gives you rights over the use of a particular mark for your goods and services and prohibits others from using the same or similar marks to represent similar goods or services.

Do you Have to Register your Trademark to Get Legal Protection?

Your trademark is not validated by registration. Indeed, there is no requirement to register your trademark to for legal protection to exist. Your trademark takes effect as soon as you present it to your customers as a way to identify your goods and services and distinguish them from others. Registration of your mark is not mandatory. As long as you can establish first use of the mark, you can still use it in commerce and enforce it against any subsequent user who infringes on your use of the mark.

While registration is not required for your trademark to enjoy legal protection, there are valuable benefits to registration.

Prima Facie Evidence of Validity

Registering your trademark provides prima facie evidence of the mark’s validity. This means that your mark is presumed to be valid until proven otherwise.

Constructive Notice of Claim of Ownership

When you register your trademark, it is listed in the trademark registry, which is accessible to the public. Therefore, the consuming public, including potential infringers, are on constructive notice of your trademark rights. This means that an infringer cannot deny knowledge of the existence of your trademark. Any other person or business thinking of using the same or similar mark as yours will have the benefit of the trademark register to show them that the same or similar mark is already in use by another business.

Broader Legal Protection

Under common law, trademark protection is extended to the first user of the mark, within the geographic market of the business, against any subsequent user of the same or similar mark. If your mark is not registered, you limit any possibilities for expansion of your business outside of your current geographic market. This means that the use of your mark could be limited to one county if there is a registered competing mark.

The internet has become an important aspect of trade and has given many businesses an opportunity to expand beyond their geographic markets. Not registering your trademark may limit your ability to expand and take advantage of new markets.

Take Action by Contacting an Experienced Trademark Attorney in Los Angeles Today

It is incredibly important to protect your brand identity; hence, it is in your best interest to invest the time and resources to secure a trademark registered with the United States Patent and Trademark Office. Once registered, it will provide you exclusive right to use the mark with specific goods or services. Furthermore, there is tremendous value in completing a trademark assignment the right way. In either instance, you should retain the services of an experienced and knowledgeable trademark attorney in Los Angeles such as the professionals at the Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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What are the differences between patents and trademarks?

Understanding the Differences Between a Patent and a Trademark

When it comes to intellectual property law, one of the most common (and important) questions people ask      is the difference between securing a patent and a trademark. The short answer is that a trademark can help protect your brand, while a patent will help protect your invention or innovation.

Overview

It is understandable to get confused about the differences between patents and trademarks since, at the end of the day, they are both intellectual property rights. Nevertheless, there are important differences that carry significant ramifications for the types of legal protections afforded to the owner of a patent versus the owner of a trademark.

Generally, a patent provides the patentee with the exclusive right to “exploit” their invention. This means competitors are legally prohibited from making, selling, using, or importing a patented product (with the exception of reaching an amicable agreement with the patentee, of course).

Conversely, when someone owns a trademark, that mark will protect the business’s brand     . The trademark will differentiate the goods and services of one owner from      another. In fact, once a trademark is registered with the United States Patent and Trademark Office (USPTO), it provides the proprietor with the exclusive use of that mark. Generally, trademarks are more beneficial when attempting to protect the following:

  • Business logo;
  • Business slogan; and
  • Particular set of colors or patterns affiliated with the business.

Key Distinctions

Though similar in some respects, there are key differences between patents and trademarks. As mentioned earlier, a patent is most beneficial to protect an invention, while a trademark is most beneficial to protect your brand.

Other key distinctions include the process related to registering a trademark versus securing a patent. There are different forms, filing fees, and requirements that must be met in order to obtain a patent versus a trademark.

Another important distinction is the amount of time a trademark is enforceable versus the time allotted to the patent holder     . For example, in the United States, as long as someone who owns a registered trademark renews the mark      every ten years, it may be enforced indefinitely. In contrast, when someone secures a patent, they generally own that patent for a term of 20 years (depending on the type of patent).

Another distinction is the legal rights afforded to an unregistered trademark     . Namely, a trademark can exist, legally speaking, absent formal registration. This is known as a “common law” trademark. The concept of a “common law” trademark may sound appealing, but it is worth noting that the rights afforded to a common law trademark are quite limited and typically confined to the state where the business is located, as opposed to a federal trademark that can be enforced nationwide.

We are experienced in applying for, and securing, trademarks and various types of patents for our clients, including:

  • Provisional patent;
  • Non-provisional patent;
  • Design patent;
  • Utility patent; or
  • Plant patent.

Have Questions? Consult with an Experienced Patent & Trademark Attorney in Los Angeles Today

Contact our reputable & experienced Los Angeles patent and trademark attorneys at the Omni Legal Group to learn more about patents and trademarks and how they can be applied to your business or idea. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation, please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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Do You Have Legal Authority to Enforce Your Trademark?

Securing a registered trademark carries an array of benefits for your business. For example, it can help promote your brand and provide important legal differentiation in the marketplace. In addition, a trademark can help protect your business from competitors and scammers trying to confuse customers with low-quality and knockoff goods and services. In many instances, a trademark is the best legal recourse available to business owners who want  to maintain the very elements that identify their company in the marketplace.

Common Law Trademark

You may be surprised to discover that a trademark is not created the day you receive approval from the USPTO. Instead, under U.S. law, a trademark is created upon the use of that mark in transacting goods or services in commerce. This is known as a “common law” trademark. You may be thinking, “great, I don’t need to spend time or money on getting my mark registered.” Not so fast. A common law trademark only provides extremely limited protections and rights to the owner. For example, it only provides protection to the geographical region in which use can be proved. This usually means a common law trademark is enforceable within the confines of a single state, city, or locality. In contrast, when you have a federal trademark approved via the USPTO, it conveys much greater protection and rights if the application is approved for registration.

Federal Trademark

If you went through the process of registering for a federal trademark and received approval, the legal enforceability bestowed upon that mark is somewhat murky. Basically, your enforcement rights will depend primarily on whether you are currently using the mark in commerce, or you intend to use the mark in commerce. If you are currently using the mark in commerce, your ability to enforce the mark will typically go into effect between seven months and a year from the date you filed your application. If, on the other hand, you are not currently using the mark, but intend to do so in the future, expect a time horizon between eight months and 2.5 years before you can legally enforce the mark.

Take Action by Contacting an Experienced Trademark Attorney in Los Angeles Today

It is incredibly important to protect your brand identity; hence it is in your best interest to invest the time and resources to secure a trademark registered with the United States Patent and Trademark Office. Once registered, it will provide you exclusive rights to use the mark with specific goods or services. Furthermore, there is tremendous value in completing a trademark registration the right way. In either instance, you should retain the services of an experienced and knowledgeable trademark attorney in Los Angeles such as the professionals at the Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

Other option if you want to keep singular would be to amend as follows: “a business owner who wants”

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How can a patent portfolio review benefit your business?

Patent Portfolio Review

If your business currently holds U.S. patents and you are interested in exploring the possibility of patenting other ideas and innovations, it may be worthwhile to invest in a patent portfolio review. Why? Because a portfolio review provides a valuable overview of your current patents, what sectors those patents are focused on, and how much you have invested in those patents.

Let’s begin…

What Exactly is a Patent Portfolio?

A patent portfolio typically encompasses the sum of issued patents, patent applications, and development ideas affiliated with your business.

What Exactly is a Portfolio Review?

A patent portfolio review includes analyzing a company’s notice protocols and making necessary recommendations to ensure the maximum protection of your patent portfolio.

A patent portfolio review may also include analyzing your company’s internal business processes, from product development to sales, to ensure maximum intellectual property protection. Your company’s employee handbooks, internal operating procedures, annual reports, and even everyday e-mails can affect your ability to enforce your patent. Internal controls and proper employee training may need to be identified and instituted to protect patents and related intellectual property.

Why Is a Portfolio Review Important?

There is significant value in taking stock of your patent portfolio since, in many instances, going through the patent portfolio review process often leads to broader intellectual property law questions that address important issues such as trademarks, copyrights, trade secrets, privacy laws, and so forth. Also, a deep dive into your patent portfolio could lead to identifying other potential patents that you haven’t applied for but could.

For example, it is common for patents to be drafted quite broadly. However, once you’ve secured your patent and are doing business, you may discover additional features that could be a candidate for a new patent. Hence, during the review process, important questions can be asked related to company processes and products to assess whether more narrowly drafted patents could benefit the overall value of your patent portfolio. The review may also reveal innovative products or processes that the company has that are eligible for patent protection but have not yet been identified.

In addition to gaining valuable insight into what you currently have patented and complying with renewal requirements, another benefit of conducting a patent portfolio review is that it helps ensure your competitors remain on notice that you hold a patent on a particular idea or innovation. In fact, to obtain full damages in a patent infringement lawsuit, you are required to prove that the infringer knew you had a patent that covered that alleged infringing product.

Interested in a Patent Portfolio Review? Contact The Omni Legal Group Today

As you can see, a patent portfolio review has the potential to help your business grow by identifying specific areas that allow you to take full advantage of the hard work you’ve put into developing products and patents. If you would like to learn more about what is involved in a patent portfolio review, contact the Omni Legal Group today. We are a premier Patent, Trademark, and Copyright law firm located in Los Angeles. Our legal team of highly experienced patent attorneys, specialize in protecting your intellectual property securing your patents, trademarks, and copyrights. To schedule an appointment please call 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

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What legal responsibility do influencers have when promoting products through social media?

Influencers Beware: Those Hashtags Could Get You in Serious Trademark Trouble

There is no denying the impact of social media on commerce and trade. Statista reports that digital advertising spending at US$380 billion in 2020, is projected to almost double that figure by 2024. Social media is      an important part of brand communication for businesses. It is quick, interactive, accessible, and has global reach. These days, it is probably safe to say      that a business’s marketing strategy for consumer goods is not complete without influencer marketing.

Social media influencers leverage their power with their followers for the benefit of the brands that they endorse. Brands rely on an influencer’s ability to convert trusting followers into paying customers. The influencer receives compensation, through free products or money, and engages with their followers. It’s a win-win for both sides, and it’s still business.

Every brand has the legal right to market and advertise their product, but they must do so without infringing on the rights of other brands, and without deceiving consumers with false claims. The U.S. District Court for the Central District of California recently ruled that social media influencers can be held legally responsible for trademark infringement and false advertising.

In the case filed by Petunia Products, Inc. (Petunia) against Rodan & Fields, LLC (R+F), Molly Sims (Sims), and others, Petunia alleged that R+F and Sims committed trademark infringement and false advertising arising from the marketing of R+F’s competing “Brow Defining Boost” product. Sims, who authored a blog post to promote R+F’s product, sought to dismiss Petunia’s claims for direct infringement, contributory infringement, false advertising, and unlawful and unfair business practices, but failed in part.

Petunia alleged among other things that Sims’s blog post with the hashtag #BROWBOOST was an infringement on their trademark and a dilution of their social media presence.

Pertinent Information to Know

  1. The owner of a trademark can make an infringement claim against anyone who uses their trademark in commerce in a way that is likely to confuse customers as to the source of the product. A trademark is used in commerce when it is used in connection with the sale, distribution, or advertising of goods and services. A sponsored blog post or paid advertisement intended to promote the sale of a trademarked good or service is considered to be used in      commerce.
  2. There is a difference between the use of a trademark to provide commentary on goods or services and commercial use of a trademark. A post will cross the line from mere commentary to commercial use when it is a paid advertisement with links to any commercial sites to encourage the sales of the goods or service.
  3. False advertising is knowingly disseminating untrue or misleading information about a good or service that is likely to deceive consumers. The use of a trademark that is likely to cause confusion in the market can be false advertising.

Even though Sims was offering her commentary about the product, which is allowed, because R+F paid Sims for the blog post it was advertising.  Therefore, Sims – a social media influencer – is legally responsible for trademark infringement because the product she advertised was infringing.

Take Action by Contacting an Experienced Trademark Attorney in Los Angeles Today

When an influencer is paid to promote a brand, they bear some legal responsibility for any claims of trademark infringement and false advertising. If you’re an influencer, it is in your best interest to have a trademark attorney assess your legal exposure before you commit to a brand.

If you’re looking for a trademark attorney in Los Angeles, our experienced trademark attorneys at Omni Legal Group can help you. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

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Is inventing something novel sufficient to be granted a patent?

Non-obvious Requirement for U.S. Patents

You might be tempted to rush to the patent office when you have invented something new, but you should not be too quick to do so until you are sure that your invention meets all the requirements for patentability. To patent your new invention, the USPTO has five requirements. The invention must be patentable, useful, new, non-obvious, and adequately described or enabled so that a person of ordinary skill in the field can use the invention. In a world where it seems like every useful thing has been invented, it is always exciting when an inventor comes up with something new. But inventing something new is not enough for a patent. It must also be non-obvious, a higher bar, to be patentable.

Novelty Requirement

The novelty requirement prohibits the registration of any invention that was previously patented, described in a printed publication, offered for sale, or made available to the public before the filing of a patent application. It also excludes any invention that was included in a prior patent application. These inventions are known as “prior art”.

Non-obvious Requirement

When you apply for a patent, the USPTO conducts a search of existing patents to ensure that your invention is truly different from any previous inventions. Whether the subject matter of an existing patent is in public use or not will not matter. What matters are the differences between the new invention and any existing prior art. If the new invention is something that would have been obvious to a person with ordinary skill in the same field, then it is obvious.

How does the USPTO determine nonobviousness?

Ultimately, the examiners at the USPTO make a decision as to the patentability of an invention, but it helps to have an idea of what they expect. As already mentioned, if the invention is something that is allowed to be patented, the USPTO examiners will consider its novelty, usefulness, and nonobviousness. To determine whether the new invention would have been obvious to a person of ordinary skill in the relevant field, they consider three factors:

  • the scope and content of the prior art;
  • differences between the prior art and the new invention; and
  • the level of ordinary skill in the relevant field.

When obviousness is considered, the test is not what would be obvious to a layperson, but rather to one who is reasonably skilled in the relevant field.

Take Action by Contacting an Experienced Patent Attorney in Los Angeles Today

What is obvious is often subjective and will depend on the facts of every application. Hence, it can be difficult to determine whether or not your invention will pass the non-obviousness test. Our highly reputable patent attorneys in Los Angeles at Omni Legal Group can help you determine whether your invention meets this crucial requirement of patentability. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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What are the legal distinctions between patents and copyrights?

Patents vs. Copyrights

Most people have heard of patents, copyrights, and intellectual property. However, many are unsure of the legal distinctions between these types of ownership.

It is important to know the difference between patents and copyrights in case you want to secure the legal rights to an idea.

Some creative inventions require a patent lawyer. Other types of intellectual property necessitate a trademark attorney. A legal professional with experience in intellectual property law can help to ensure that your idea or invention is protected.

What is Intellectual Property?

The phrase “intellectual property” refers to any unique concept or idea that is potentially valuable. Some common examples include:

  • An invention
  • Original theoretical idea
  • Works of fiction
  • Original musical compositions
  • And more

The owner of an invention or work of culture has the legal right to license, manufacture, or publish based on that concept or idea. Patents and copyrights are both ways to secure ownership over intellectual property.

Which Types of Intellectual Property Require a Patent Lawyer?

Patents are a type of property right. They are granted to patent holders through the U.S. Patent and Trademark Office (USPTO).

Patents are intended to protect original inventions. The most common types of patents cover new utilities or designs.

Utilities include machines, material processes, or manufactures. Design patents protect ornamental or aesthetic designs related to objects.

If you own the patent on an invention, you can prohibit others from using it. In other words, you can stop other people from making, using, or profiting from your invention.

Patents only last for a limited amount of time. Exclusive rights to an invention last for 14 to 20 years, beginning on the date that the patent is granted. The length of a patent will depend on the type of intellectual property that it covers.

What is a Copyright?

Unlike patents, copyrights protect a person’s original works. Copyrights can apply to both published and unpublished works, such as:

  • Literature
  • Art
  • Music
  • Software
  • Architecture
  • And more

The holder of a copyright can prevent others from reproducing or profiting from their creation. In some instances, a design work can be covered by both copyright and a patent.

Copyright protection lasts for the remainder of the author’s life plus 70 years.  This allows the author’s heirs to continue benefiting from their work.

The issues surrounding intellectual property law are complex. If you hope to secure the rights to your original work, consult with a patent attorney at your earliest convenience.

Take Action by Contacting an Experienced Intellectual Property Attorney in Los Angeles Today

It is incredibly important to protect your intellectual property; hence it is in your best interest to invest the time and resources to secure protection. Whether in the Copyright office or with the United States Patent and Trademark Office, you should retain the services of an experienced and knowledgeable intellectual property attorney in Los Angeles such as the professionals at the Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

 

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Do patents or trade secrets better protect artificial intelligence?

Patent to protect artificial intelligence

The Interplay between Patents and Trade Secrets for Utilizing Artificial Intelligence

When it comes to effectively protecting valuable technology and products based on artificial intelligence (“AI”), it is important to understand the complex interplay between patent law and trade secret law. There are advantages and potential pitfalls related to both patents and trade secret law. For example, trade secret law can offer protection where patent law does not, and vice versa.

The Challenge is Securing an AI-based Patent

It is commonly said that an invention is only as valuable as the patent that protects the invention. However, this old adage becomes moot if you are unable to secure a patent. When it comes to inventors seeking a patent for a product that utilizes AI technology, the hurdles are quite challenging to overcome in the journey to obtain a USPTO-approved patent.

The difficulties associated with securing a patent for a product predicated on AI goes to the heart of the legal definition for a patent. For example, according to 35 U.S.C. § 101, a patentable subject matter is “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

The difficulty associated with AI technology and a patent application is that many patent examiners with the USPTO often consider this type of technology to be more of abstract ideas. In an effort to address this issue, the USPTO established multiple categories to refine the definition, but the overarching theme amongst the categories set forth by the USPTO is that if a human mind can accomplish the task, then it is likely an abstract idea.

Trade Secret Law

If an inventor of an AI product or technology is rebuffed by USPTO when applying for a patent, it may be worthwhile to review relevant trade secret laws. Why? Because the protections afforded to trade secrets were bolstered by the enactment of the Defend Trade Secrets Act (DTSA). This federal law was passed in 2016 and contains an array of features focused on reinvigorating what had become a set of stale and ineffective laws that were not very effective in protecting trade secrets.

According to the DTSA, specifically 18 U.S.C. § 1839(3)(B), a secret only needs to have “actual or potential” value derived from the secrecy to be deemed a trade secret for a business. As a result, a trade secret can now cover a plethora of potential subjects, as long as the trade secret meets this new legal standard.

Navigating the Patent Application Process is Not Easy. Take Action by Contacting an Experienced Patent Attorney in Los Angeles Today

Securing a patent for an invention is extremely important. Nevertheless, the patent application process is complex and can be intimidating to navigate. This is where Omni Legal Group comes in. Whether you are looking for a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, you can always count on the professionals at Omni Legal Group to give you and your invention the care and attention it deserves. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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Why is it important for a trademark assignment to be handled properly?

Trademark Attorney in Los Angeles

How to Reduce the Risk of Engaging in an Illegal Trademark Assignment

Owning a trademark is widely viewed as one of the most valuable and important assets for any business. Hence, it is so important not to be cavalier about engaging in a trademark assignment. When a business owner mishandles or violates the law while engaging in a trademark assignment, it could completely negate the enforceability of the trademark, thereby torpedoing its value.

When an illegal trademark assignment occurs, it is typically the product of carelessness and neglect, or it could very well be deemed an assignment-in-gross.

What is an Assignment-in-Gross?

An assignment-in-gross occurs when a business owner assigns their trademark without including the underlying goodwill (i.e. the inherent value and name recognition associated with the mark) and any other accompanying assets. When a business owner commits an assignment-in-gross, the ramifications are severe since a court could invalidate the assignment and would result in the trademark being deemed abandoned. As a result, both parties (i.e. the owner of the mark and party attempting to secure the mark) will lose any rights to the trademark.

To prevent such circumstances, an assignment must include (i) other related business assets and (ii) must be completed with genuine goodwill.

Assets that are deemed eligible to accompany a trademark assignment include:

  • Company shares;
  • Trade secrets; and/or
  • Management or other financial assets

Analyzing whether a trademark assignment was completed with genuine goodwill can be extremely difficult to measure. Courts tackle this issue by using the “substantial similarity” test. This test assesses both the quality and description of the goods and/or services prior to, and after, the transfer of the trademark.

When a business owner attempts to simply assign their trademark without any accompanying business assets or without sufficient evidence of genuine goodwill, it is a violation of federal law since a trademark, in and of itself, does not possess actual value. When a trademark transfer occurs without meeting the two-part standard described above, it is an illegal trademark transfer under the Lanham Trademark Act, which is codified under 15 U.S.C. § 1060.

Take Action by Contacting an Experienced Trademark Attorney in Los Angeles Today

It is incredibly important to protect your brand identity; hence it is in your best interest to invest the time and resources to secure a trademark registered with the United States Patent and Trademark Office. Once registered, it will provide you exclusive right to use the mark with specific goods or services. Furthermore, there is tremendous value in completing a trademark assignment the right way. In either instance, you should retain the services of an experienced and knowledgeable trademark attorney in Los Angeles such as the professionals at the Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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Can a landlord be held liable for trademark infringement?

Trademark Lawyer Los Angeles

Landlord May be Held Liable for Trademark Infringement

If you are a landlord renting a property to a tenant who is found to be selling counterfeit goods, you may be held liable for trademark infringement. However, a landlord can only be held liable if there is evidence that the landlord had actual knowledge that the tenant was engaged in infringing acts, or they were willfully negligent to the infringing activities.

Court Decision in Eleventh Circuit Highlights Landlord Liability

An actual case of a landlord being held liable for a tenant’s trademark infringing activities can be found in Luxottica Group v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. August 2019). In this case, a subsidiary corporation Oakley, Inc. and its parent company Luxottica Group filed a civil lawsuit against the owners of a shopping mall in Georgia. The basis for the lawsuit was alleging the shopping mall owners were liable based on contributory trademark infringement under a federal law known as the Lanham Act.

The infringing activities involved high-end luxury sunglasses. The lawsuit alleged that Luxottica and Oakley, Inc. sold luxury sunglasses using Ray-Ban and Oakley trademarks.  The owners of the shopping mall also managed the interior of the mall and were the landlords for businesses within the mall. The lawsuit revealed that the shopping mall owners were aware of three separate raids by law enforcement officials of businesses within the mall that were actively selling counterfeit sunglasses.

The shopping mall owners reportedly gained actual knowledge of the infringing activities since they received copies of search warrants from law enforcement and knew which businesses were the focus of the raids. In addition, there is evidence of correspondence sent from Luxottica to the shopping mall owners informing them that some of their subtenants were engaged in selling counterfeit sunglasses that infringed upon the trademarks owned by Ray-Ban and Oakley.

Another key factor is that the shopping mall owners apparently failed to take any action to remedy or halt the subtenants from engaging in the sale of counterfeit products within their property. For example, the shopping mall owners never even attempted to evict the subtenants or terminate their leases.

The lawsuit went to trial and a jury found the shopping mall owners liable for contributory trademark infringement. The jury awarded $1.9 million in damages to Luxottica as a result. The shopping mall owners appealed the jury verdict. Nevertheless, the Eleventh Circuit Court of Appeals affirmed the nearly-two-million-dollar jury verdict.

The Lanham Act

The Lanham Act is a federal law that establishes a defendant can be held liable for contributory infringement when the defendant induces or knowingly facilitates the trademark infringement.

In order to establish contributory trademark infringement under the Lanham Act, a plaintiff bears the burden of establishing the following during a lawsuit:

  • There was direct trademark infringement by someone; and
  • A defendant intentionally induces the infringer, or supplied a product to the infringer, with either actual knowledge or constructive knowledge of the infringing acts.

If you are wondering, “what is constructive knowledge? Well, a prime example is willful blindness, which occurs when a defendant suspects a wrongful act but deliberately fails to investigate the act.

Have Questions About How to Protect Your Trademark? Contact the Highly Reputable Trademark Lawyer in Los Angeles

If you have a trademark that you suspect is being infringed, or you want to ensure proper protection, the trademark lawyers at Omni Legal Group is here to help. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit  www.OmniLegalGroup.com to learn more.

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