Be Prepared: The Importance Of Due Diligence In Choosing Between Bench And Jury Trials

A key decision when facing litigation is whether to push for a jury or bench trial. Careful due diligence can help rights holders to determine which type of trial would best suit their case - and be most likely to yield a favourable outcome.

Choosing between a jury trial and bench trial can be a crucial decision in any trademark enforcement proceeding, but it is not always a straightforward one. Careful due diligence can be crucial when it comes to deciding where to have your suit heard.

Due diligence investigation

A rights holder which has identified a potential infringer and its alleged infringing activity must conduct a detailed background investigation before asserting a claim. This is necessary not only as an ethical obligation, but also as a basis to establish a strategy for enforcing its rights. Such an investigation should include the following:

a history of the use of the marks or trade dress rights to be asserted; identification and review of any prior litigation involving the marks or trade dress; whether a family of marks is involved and whether there are other related marks owned by the putative plaintiff - if the latter, their history; the ownership record of the marks or trade dress at issue, including: whether these rights have previously been transferred; whether the transfer history has been appropriately documented; whether licence rights were ever granted with respect to the marks; the terms and conditions of those licence grants, if any; the history of the marks in the context of the goods and services associated with them, including examples of use, volume of sales for services or goods, advertising expenses and the like; and whether the registered trademarks have been utilised as collateral and assigned to a financial institution (a common occurrence); an analysis of the mark's strength - the rights holder should perform a thorough pre-litigation search and identify competitors' marks that are similar for the same or similar goods/services, including whether there been any conflicts with competitors in the past and, if so, the results; whether the rights holder is a member of a trade association or organisation and, if so, what involvement it and the potential defendant have had in such organisations, and whether there are any applicable rules of conduct that may affect a conflict; how the mark is used (eg, internet use, print, video, audio with personnel), and whether any blogs have used the mark or have commented with regard to the goods or services; whether the mark is famous (see RJ Reynolds Tobacco Co v R Seelig & Hille, 201 USPQ 856 (TTAB 1978) - "[I]t is well recognized that the law today rewards a famous or well-known mark with a larger cloak of protection"); any likely witnesses, including where they are located, their pedigree and whether they are likely to be sympathetic; whether there has there been actual confusion in the marketplace or any pre-litigation surveys - if not, whether a survey would be appropriate to demonstrate, for example, that the mark is famous or known to potential consumers; the type of expert evidence that would be most relevant - here the expert's credibility and relevance become relevant, especially who they might be and what type of testimony they would offer in order to comply with a Daubert challenge (see Daubert v Merrell Dow Pharmaceuticals, 509 US 579 (1993)); the anticipated damages associated with the infringement; and if the mark is especially important, an unusual but not necessarily extreme preliminary evaluation of the case utilising a mock jury. In addition, the rights holder should investigate the potential defendant's business activities and litigation history, including its reputation, location, involvement in business organisations and experience in prior...