A federal district court recently granted a defendant's motion to dismiss a claim alleging infringement of a federally registered trademark under 15 U.S.C. § 1114. (Zipsleeve, Inc. v. W. Marine, Inc., No. 3:14-cv-01754, (D. Or. May 19, 2015)). The problem with the plaintiff, ZipSleeve, LLC's allegations? ZipSleeve had allowed its federal trademark registration to lapse and therefore could not base its claim on that registration, even though some of the defendant West Marine, Inc.'s infringing behavior allegedly took place while the registration was still valid.

However, all was not lost for ZipSleeve, as it had also alleged claims against West Marine based on common law rights in its complaint. As a result, the case is still pending.

ZipSleeve v. West Marine illustrates why counsel should plead common law trademark rights and include a claim under 15 U.S.C. § 1125(a) when drafting pleadings in a trademark matter. While the available remedies under Sections 1114 and 1125(a) are generally the same, a Section 1125(a) claim for unfair competition and false designation of origin requires no federal registration. If the trademark owner's registration has lapsed like ZipSleeve's, or is cancelled or invalid for any reason, the trademark owner may still retain enforceable common law rights in its mark sufficient to maintain a Section 1125(a) claim.

Practical Law's Standard Document, Trademark Litigation: Complaint (Federal) includes this tip among its many helpful drafting notes. Other useful guidance includes:

For a step-by-step guide to drafting a complaint in an action for trademark infringement and related claims in federal district court, see Practice Note, Trademark Litigation: Drafting the Complaint.

For more information on grounds and defenses in trademark infringement litigation, see Practice Note, Trademark Infringement and Dilution Claims, Remedies and Defenses.

And for assistance in responding to a federal complaint alleging trademark claims, see Practice Note, Trademark Litigation: Answering a Complaint and Standard Document, Trademark Litigation: Answer.

Likewise, for those seeking recourse before the Trademark Trial and Appeal Board (TTAB), the Standard Document, TTAB: Petition for Cancellation (Likelihood of Confusion and Dilution) contains helpful drafting tips about, for example:

For a sample notice of opposition, see Standard Document, TTAB: Notice of Opposition: ITU Application (Likelihood of Confusion and Dilution).

For more information on grounds and defenses in cancellation proceedings, see Practice Note, TTAB Oppositions and Cancellations: Grounds and Defenses.

For information on practice and procedure in cancellation proceedings, including the timing and process for instituting a cancellation proceeding, see Practice Note, TTAB Oppositions and Cancellations: Practice and Procedure.

In addition to integrated drafting notes that highlight important issues specific to each form, Practical Law's Standard Documents can be downloaded and saved for easy editing and customization.