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Trademarks: Remedies

    There are a number of remedies available to a prevailing plaintiff. First and foremost a plaintiff is likely to seek injunctive relief in order to prevent any further harm to their brand (i.e. lost of reputation value and lost of profits).

    Injunctive Relief

    Section 1116(a) provides for injunctive relief.

    § 1116. Injunctive relief

    (a) Jurisdiction; service
    The several courts vested with jurisdiction of civil actions arising under this chapter shall have power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title. Any such injunction may include a provision directing the defendant to file with the court and serve on the plaintiff within thirty days after the service on the defendant of such injunction, or such extended period as the court may direct, a report in writing under oath setting forth in detail the manner and form in which the defendant has complied with the injunction. Any such injunction granted upon hearing, after notice to the defendant, by any district court of the United States, may be served on the parties against whom such injunction is granted anywhere in the United States where they may be found, and shall be operative and may be enforced by proceedings to punish for contempt, or otherwise, by the court by which such injunction was granted, or by any other United States district court in whose jurisdiction the defendant may be found.

    Comment: Notice that a plaintiff can file for injunctive relief in any federal district court and the defendant can be served anywhere in the nation. This is certainly a plaintiff/business friendly provision and makes sense since the statute provides national protection.

    Money Damages

    Injunctive relief is granted, where warranted, to prevent future harm, but the prevailing plaintiff is also entitled to money damages for past harm. Section 1117(a) (see below) allows the plaintiff to recover the following: (1) defendants profits; (2) any damages sustained by the plaintiff; and (3) cost of the action.

    § 1117. Recovery for violation of rights

    (a) Profits; damages and costs; attorney fees
    When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125 (a) or (d) of this title, or a willful violation under section 1125 (c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover

    (1) defendant’s profits,
    (2) any damages sustained by the plaintiff, and
    (3) the costs of the action.

    The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant’s sales only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

    Comments: Another plaintiff friendly provision is the respective burdens described in (3) above. The plaintiff need only prove gross sales (a number more readily attainable) and it is the defendant's burden to prove all deduction therefrom. Section 1117(b) allows for treble damages if a court finds the intentional use of a counterfeit mark. Section 1117(d) allows for statutory damages for domain name violations.



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