February 05, 2020

How to Choose a Trademark Lawyer

Portrait Kelly Mulcahy
By Kelly Mulcahy

Senior Associate

How to Choose an Attorney to Litigate Your Trademark Infringement Matter in the Internet/Tech/Digital Media Arena

Trademark infringement that occurs over the internet or in other types of digital media can result in significant damages to the trademark holder, in a very short period of time. Thus choosing an attorney who will aggressively protect your rights (or defend against infringement allegations of others), and who will give you the highest probability of prevailing, is an important decision for a company.

Experience Litigating Cases Involving the Internet and Digital Media. Infringement on the internet and in digital media involves facts and legal arguments that are very different from infringement cases occurring in the offline world. Exploiting online marketplace rules to infringe competitors’ marks, infringement of marks using CSS files or metadata, and anonymously selling counterfeit goods using international websites are examples of complex trademark infringement where experience is essential to success in court.

Experience in Conducting Digital Forensic Analysis. Identifying a defendant and proving that the identified defendant is the one responsible for infringement is often very difficult in internet and digital media cases. Identifying the key holders of information, crafting effective subpoenas, and analyzing large amounts of data for digital clues are key skills that effective internet infringement counsel must possess.

Choose Seasoned Trademark Counsel. Regardless of an attorney’s knowledge of internet technologies, success in litigating internet trademark infringement requires a mastery of the fundamentals of trademark law. Trademark law is complex, and years of experience in litigating trademark cases, in prosecuting trademark matters with the U.S. Patent & Trademark Office, and of providing trademark advice to clients, are all important in selecting an attorney to represent you in court on an internet trademark infringement matter.

Tiered Billable Rates. Your lead trademark litigation counsel should not be performing paralegal or junior associate tasks. And there are key legal tasks for associates and junior associates that are inappropriate for more experienced partners. Without a smart division of labor on a case, with attorneys and paralegals with tiered billable rates, a company will significantly overpay for legal services.

Experience in Tech-Heavy Courts. Complex internet-related trademark infringement cases are litigated in federal courts all around the country. However, the tech-heavy district courts in Northern California are home to a disproportionate amount of tech and internet-related intellectual property litigation, due to the presence of Google, Facebook, Twitter and thousands of internet-related companies throughout Silicon Valley and the San Francisco Bay Area. Attorneys who practice frequently in this tech-heavy district are positioned to be better advocates in complex trademark infringement cases involving the internet and digital media.

Seasoned Trial Attorneys and Advocates. Regardless of tech and internet experience, the attorney handling your internet trademark matter needs to be a relentless advocate and savvy litigator. Experience litigating many cases all the way to a jury is important to the ability to exercise the key judgment involved at all stages of your litigation.

Personal Interest in Tech / Internet / Digital Media. Methods of trademark infringement on the internet and in digital media change frequently as technology and e-commerce strategies change. Attorneys who love internet and tech legal issues are better positioned to grasp the facts of your infringement matters and to exercise the creative thinking required to get your case resolved. Look for an attorney who has a passion for legal issues related to the internet and technology.

About Kronenberger Rosenfeld, LLP

We are a 15-year old San Francisco-based law firm that focuses solely on internet intellectual property and tech legal matters. We are tech-savvy and relentless advocates for fast-paced entrepreneurs and emerging businesses.

This entry was posted on Wednesday, February 05, 2020 and is filed under Resources & Self-Education, Internet Law News.

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