Strategies for Dealing with Bad Faith Use of Trademarks

Finnegan attorney Danny M. Awdeh was a participant in a panel discuss on bad faith use of trademarks at the 2015 AIPPI World Congress, where he provided helpful strategies for companies dealing with bad faith use. He said, "Trademark owners should take early discovery to obtain documents and written admission surrounding the selection of the mark at issue." He also believes that a live deposition may reveal motives indicative of bad faith or fraud. Awdeh also noted that although bad faith filings can be addressed before both the TTAB and in federal court, the TTAB only has the authority to decide registration issues. If a trademark owner is seeking an injunction or damages, it will need to go through the federal court system.