Rebutting Willful Trademark Infringement: Clearance Searches Opinions of Counsel and USPTO Approval

46 questions on rebutting willful trademark infringement, answered and cited by the UpLaw editorial team.

• Can a company be found to infringe willfully only as to conduct after receiving notice?
• Can a plaintiff recover both the defendant's profits and its own actual damages?
• Can two unrelated businesses in different states own the same unregistered trademark?
• Did Romag make a trademark defendant's mental state irrelevant?
• Does a clearance search and attorney opinion prevent a trademark lawsuit?
• Does good faith defeat liability for trademark infringement?
• Does relying on an opinion of counsel waive the attorney-client privilege?
• Does the Lanham Act protect innocent printers and publishers?
• Does the quality of clearance work affect how much protection it provides?
• How did Romag shift the practical burden onto trademark defendants?
• How does a good-faith record play out when the senior user later expands into the junior user's market?
• How does federal registration cut off a remote good-faith user defense?
• How does laches interact with willful trademark infringement?
• How does the Restatement organize the fault gradient in trademark monetary relief?
• How does USPTO examination help establish good faith?
• How much weight do courts give USPTO approval of a mark in later infringement litigation?
• How should counsel manage the privilege risk of an advice-of-counsel defense?
• If disgorgement is off the table, is a good-faith infringer home free?
• Is an injunction available against a good-faith trademark infringer?
• Must a business capitulate to every trademark cease-and-desist letter to preserve good faith?
• What clearance-search mistakes destroy the good-faith record?
• What did Romag Fasteners v. Fossil hold?
• What did Sands, Taylor & Wood v. Quaker Oats establish about reliance on counsel?
• What does good faith look like in a trademark adoption?
• What does good faith mean for a remote junior user of a trademark?
• What equitable factors do courts weigh before ordering disgorgement of profits?
• What evidentiary presumptions does a federal trademark registration provide?
• What is an exceptional case for attorney's fees under the Lanham Act?
• What is a trademark clearance search, and what does it cover?
• What is a trademark opinion of counsel?
• What is disgorgement of profits in a trademark case?
• What is the Quantum dilemma, and how does it apply to trademark cases?
• What is the Tea Rose-Rectanus doctrine?
• What is willful blindness in a trademark infringement case?
• What kinds of evidence prove good faith in adopting a trademark?
• What makes an opinion of counsel credible enough to negate willfulness?
• What makes trademark infringement willful?
• What monetary remedies might a good-faith trademark infringer still owe?
• What steps build a good-faith trademark record before a demand letter arrives?
• When are treble damages available in a trademark infringement case?
• When is willfulness still an absolute requirement for monetary relief under the Lanham Act?
• Which factors govern likelihood of confusion in trademark infringement?
• Which Lanham Act sections govern trademark infringement claims and remedies?
• Why does running a clearance search help prove good faith?
• Why does the phrase close question matter in the advice-of-counsel defense?
• Why is the closeness of the case on the merits relevant to disgorgement?