Intellectual Property Disputes

Intellectual property, or IP, such as trademarks or copyrights, can be one of the most valuable types of assets a business has. It's important to protect your IP from infringers. D'Lima Law can help with cease and desist letters and litigation.

D'Lima Law can also help if the USPTO or US Copyright Office has rejected your trademark or copyright application.

Intellectual Property Rights

Even though intellectual property is intangible, it's still an extremely important and valuable type of asset for most companies. Protecting the ownership and usage of intellectual property is vital to protect against loss of the intellectual property. D'Lima Law, LLC can represent companies asserting or defending the rights and usage of intellectual property assets involving trademarks and copyright.

The most common type of intellectual property disputes involve infringement, which is the use of a trademark or copyright by a party that doesn't have ownership or permission for the use.

Disputes can also arise during the filing for trademark or copyright protections with the United States Patent and Trademark Office (USPTO) or the United States Copyright Office.

Trademark Infringement
USPTO Trademark Office Actions and Denials
Copyright Infringment
US Copyright Office Refusals
Trademark Infringement

Trademarks (or service marks) concern the name and logo of a company - basically, its identity. This protection can also extend to domain names, "trade dress" like distinctive colors or shapes, product packaging, and jingles. Protecting your trademark is vitally important to protecting your company's integrity.

The purpose of a registered mark like a trademark or service mark is for consumers to easily identify the producer or provider of a particular product or service. Infringement is the unauthorized use of a registered mark in such a way that the use is "likely to cause confusion, or to cause mistake, or to deceive" (15 U.S. Code § 1114(1)).

Often, a cease and desist letter to the infringer demanding that they stop using the registered mark, and warning of potential legal action, may be enough to stop the infringement from continuing. A proceeding can also be filed with the Trademark Trial and Appeal Board (TTAB) to prevent or cancel the registration of an infringing trademark with the USPTO.

Because trademark law is federal law, D'Lima Law, LLC can provide advice on trademark infringement, prepare cease and desist letters, and file proceedings with the TTAB for clients across the United States.

A lawsuit may need to be filed if the infringer does not respond to a cease and desist letter, or if substantial economic harm has already happened. Most trademark infringement cases are filed in federal court. D'Lima Law, LLC can represent parties in the United States District Court for the Eastern District of Virginia, which covers the eastern half of Virginia including Northern Virginia, Richmond, and the Newport News area.

Remedies for a party bringing an infringement lawsuit can include, depending on the circumstances of the case and the intentions of the defendant behind the infringing use:

  • Recovery of defendant's profits from the infringing use
  • Recovery of monetary damages experienced by the mark owner
  • Treble damages: the court may award three times the amount of profits or damages, whichever is greater
  • Recovery of the costs of the lawsuit
  • Recovery of reasonable attorney fees
  • Pre- and post-judgment interest
  • Statutory damages ranging from $1,000 to $2,000,000
  • Injunctions (a court-ordered prohibition) against future use
  • Destruction of infringing items

Monetary-based remedies can often be difficult to prove, but a lawsuit may still be worthwhile to prevent future use of the trademark.

Domain Name Issues Specifically

The Anticybersquatting Consumer Protection Act (ACPA) protects against those who would register or use a domain name confusingly similar to a trademark (15 U.S. Code § 1125). Remedies under the ACPA include the cancellation or transfer of the domain name.

Domain name disputes can also be decided under the Uniform Domain Name Dispute Resolution Policy (UDRP) by an administrative panel from the non-governmental Internet Corporation for Assigned Names and Numbers (ICANN).

Protections Under Virginia Law

Trademarks and service marks can also be registered with the Virginia State Corporation Commission (SCC) under the Virginia Trademark and Service Mark Act. An infringer can be liable to the owner of the registered mark in a civil lawsuit, and remedies can include, depending on the circumstances and the knowledge of the infringer:

  • Recovery of defendant's profits
  • Recovery of monetary damages
  • Recovery of reasonable attorneys fees
  • Injunctions
  • Destruction of infringing materials

The owner of a registered mark can also ask the SCC to cancel a registration that infringes on their mark.

USPTO Trademark Office Actions and Denials

If the USPTO examining attorney notices any legal problems with your trademark filing, the examining attorney can issue an "office action." An office action is a letter listing the problems that must be solved before the USPTO can register your trademark, or outright refusing the application.

Some issues are simple to fix, while other issues are complex and may benefit from the assistance of an intellectual property attorney. Most office actions require a response to be made within six months of the issue date.

If your application to register your trademark was denied, you can file an appeal to the Trademark Trial and Appeal Board (TTAB) within six months of the mailing date of the final refusal to register.

Because trademark registrations are governed by federal law only, D'Lima Law, LLC can help with office action responses and TTAB appeals for clients across the United States.

Virginia State Trademark Applications

The Virginia State Corporation Commission (SCC) can notify applicants for state trademark registration that their mark is not entitled to registration, and the applicant has 90 days to respond. (Va. Code § 59.1-92.5). A refusal to register by the SCC can be appealed to the Virginia Supreme Court.

People reviewing logos

Copyright Infringement

Copyright protects creative works, which include the familiar music, movies, art and writings, but also cover computer programs, architectural works and ship hull designs.

Copyright holders are protected by infringers under federal law (17 U.S.C. § 501).

Often, a cease and desist letter to the infringer demanding that they stop using the copyrighted material, and warning of potential legal action, may be enough to stop the infringement from continuing.

Because copyright law is federal law, D'Lima Law, LLC can provide advice on copyright infringement and prepare cease and desist letters for clients across the United States.

A lawsuit may need to be filed if the infringer does not respond to a cease and desist letter, or if substantial economic harm has already happened. Most copyright infringement cases are filed in federal court. D'Lima Law, LLC can represent parties in the United States District Court for the Eastern District of Virginia, which covers the eastern half of Virginia including Northern Virginia, Richmond, and the Newport News area.

Remedies for a party bringing an infringement lawsuit can include, depending on the circumstances of the case, the intentions of the defendant behind the infringing use, and whether the copyright was registered before or after the infringement:

  • Recovery of defendant's profits from the infringing use
  • Recovery of monetary damages experienced by the mark owner
  • Recovery of the costs of the lawsuit
  • Recovery of reasonable attorney fees
  • Post-judgment interest
  • Two times what would have been paid pursuant to a license fee
  • Statutory damages ranging from $200 to $30,000
  • Injunctions (a court-ordered prohibition) against future use
  • Destruction of infringing items

Monetary-based remedies can often be difficult to prove, but a lawsuit may still be worthwhile to prevent future use of the copyrighted material.

US Copyright Office Refusals

The US Copyright Office, part of the Library of Congress, processes applications for registration of copyrights. Copyrights do not need to be registered, but can be helpful in proving ownership and is also required before an infringement lawsuit can be filed.

The US Copyright Office can determine that an application for copyright does not contain copyrightable subject matter, or has some other legal issue, and can refuse to register the copyright.

The applicant can appeal that refusal, which is known as a first request for reconsideration, within three months of the refusal. A staff attorney from the Registration Program will give the application a fresh look and make a decision.

If the first request was unsuccessful, the applicant can file for a second request for reconsideration within three months of the Office's response to the first request. This second request is heard by the Review Board, which will look at the case file but make a decision on its own. (Contesting a Review Board decision would require filing an appeal against the Registrar of Copyrights in D.C.).

D'Lima Law, LLC can help clients across the U.S. with first and second requests for reconsideration with the U.S. Copyright Office.

Want to talk to an intellectual property attorney?

Registering and protecting intellectual property assets like trademarks and copyrights can be complex, and this page only provides a brief summary. An experienced IP lawyer can help.

Contact us to set up a free consultation. You can call or text us at 1-800-516-8060, or fill out our contact form here.