Trademark Infringement: Structuring Opinions of Counsel

Opinions of counsel play a significant role in determining the best trademark options for a company. Offensively, they are important in determining whether a third party may be infringing the claims of one of the company’s marks. Defensively, opinions can be used to determine whether the company accused of infringing a third party's intellectual property rights can continue business activities without facing infringement litigation.

Opinions of counsel are traditionally a first line of defense in the event of trademark infringement claims. Opinions of counsel provide valuable advice and suggestions for options to reduce the risks of infringement. However, asserting the defense can put the attorney advice at issue and result in waiver of the attorney-client privilege.

Listen as our authoritative panel of trademark attorneys examines the standard for trademark infringement claims and the use of opinions of counsel. The panel will discuss the issue of waiver of the attorney-client privilege and provide best practices for structuring and using opinions of counsel.

1. Standard for infringement and use of opinions of counsel
2. Waiver
3. Court treatment
4. Best practices for employing opinions of counsel

The panel will review these and other key issues:

• How can trademark opinions of counsel be used both offensively and defensively to strengthen a company's brand and trademark portfolio?
• How have the courts treated the use of trademark opinions of counsel?
• Under what circumstances should corporate counsel seek outside opinions of counsel to protect their client from infringement claims?