Trademark Infringement Remedies: Overcoming the Challenges of Inconsistent Court Treatment to Protect IP Rights

Recording of a 90-minute CLE webinar with Q&A

Conducted on Wednesday, May 11, 2016
Recorded event now available

This CLE webinar will provide guidance to IP counsel on the monetary and non-monetary remedies available for trademark infringement. The panel will provide guidance for navigating through inconsistent court rulings on trademark infringement remedies.


Court treatment on remedies for trademark infringement under the Lanham Act has been inconsistent. This has created uncertainty and confusion for IP owners and poses a challenge in obtaining relief: injunctive, compensatory damages, enhanced damages, and attorneys’ fees.

In a 2015 decision, the Fourth Circuit turned to the Supreme Court’s decision in Octane Fitness, a patent decision, in its analysis of exceptional conduct for awarding damages in a trademark infringement case, Georgia-Pacific Consumer Products v. von Drehle Corp (4th Cir. 2015). The Fourth Circuit remanded the case with instructions to consider the implications of Octane Fitness with respect to injunctive and monetary relief.

Further, it appears that district courts are now finding a middle ground when shaping statutory damages awards. Recent opinions from the Northern District of Illinois and the Southern District of New York provide guidance on electing statutory damages in trademark counterfeiting cases. Counsel must carefully navigate the court treatment to make the best case for protecting a company’s brands and recovering remedies for trademark infringement and dilution of the brand.

Listen as our authoritative panel of trademark attorneys examines non-monetary equitable remedies as well as monetary remedies that can be pursued in federal trademark infringement cases. The panel will discuss the courts’ inconsistent treatment and provide guidance for navigating through the inconsistencies to protect IP rights.


  1. Court treatment
  2. Non-monetary relief
    1. Preliminary injunctions
    2. Permanent injunctions
    3. Extraordinary circumstances and relief
  3. Monetary relief
    1. Availability
    2. Prerequisites
    3. Challenges of enhanced damages and attorneys’ fees
  4. Other remedies


The panel will review these and other key issues:

  • What relief and remedies are available for infringement and unfair competition?
  • What are the challenges with the definition of the proper scope of review when the courts have inconsistently reviewed injunctions?
  • When may attorneys’ fees be obtained in trademark infringement litigation?


Robert W. Payne, Esq.
Payne IP Law, San Jose, Calif.

Mr. Payne is the owner of Payne IP Law, located in the heart of Silicon Valley. With over 20 years’ experience, he practices trademark, patent and other intellectual property litigation and dispute resolution. Mr. Payne is former Chair of the California Bar’s IP Section Executive Committee and former Chair of the AIPLA’s Patent Litigation Committee. He has authored over 50 trademark and patent articles in various publications and is a frequent presenter on IP topics. Mr. Payne is affiliated with the Hoge Fenton law firm in San Jose.

Bradley J. Walz, Shareholder
Winthrop & Weinstine, Minneapolis

Mr. Walz is experienced in all aspects of trademark and copyright law, and assists with trademark opposition and cancellation proceedings before the TTAB and with trademark, unfair competition, copyright, and cybersquatting litigation in federal district court. He represents clients on complex and strategic legal and business matters related to cloud computing, software development and data security.


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Intellectual Property Law Advisory Board

Stephen R. Baird


Winthrop & Weinstine

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Ian N. Feinberg


Feinberg Day Alberti & Thompson

Bassam N. Ibrahim


Buchanan Ingersoll & Rooney

Mark P. Wine



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