Practical Considerations When Defending Trademark Infringement Lawsuits

INTELLECTUAL PROPERTY LITIGATION Who Is David and Who Is Goliath and Why Are We in Such a Hurry? By Joseph L. Kish and Aleksandra Vold Meeting the unique challenges involved in these cases provides defense counsel with a satisfying experience, but requires energetic effort, diligence, and constant evaluation of the client s position. Practical Considerations When Defending Trademark Infringement Lawsuits Trademark litigation is unlike other litigation in many respects, both procedurally and substantively. Defense attorneys and corporate representatives, although sophisticated in civil litigation generally, are often surprised when they first face a trademark lawsuit for a number of reasons. First, trademark litigation presents many procedural differences from other forms of litigation, including expedited procedures, provisional remedies, and property seizures. Second, the balance of power among the parties is often unlike other forms of civil litigation defense. In a trademark case, the plaintiff is often a well-heeled corporate entity having highly sophisticated and intellectual property specialists as counsel. Third, defendants that are sued for trademark infringement are often smaller, less sophisticated clients then those typically represented by DRI members. Fourth, unlike other forms of competition law or even business litigation generally, trademark litigation can be more emotionally driven than other forms of intellectual property or business education primarily because a plaintiff s name or brand is at stake. As a result, the litigation features terms such as piracy, willful, malicious, and other emotionally charged terms, some of which find a basis in the law. For these reasons, defense attorneys, corporate representatives, and insurance carriers need to treat trademark litigation differently from other forms of civil liti- Joseph L. Kish is a partner at Synergy Law Group LLC in Chicago and heads the firm s Litigation Group. He has extensive trial and appellate experience in federal and state courts, as well as alternative dispute resolution experience involving mediation and arbitration. Aleksandra Vold is an associate at Synergy Law Group in the firm s litigation department. She has trial and appellate experience in federal and state courts, as well as experience with alternative dispute resolution involving mediation and arbitration. 76 For The Defense January 2014 2014 DRI. All rights reserved.

gation. Trademark defense needs to be far more proactive far earlier in the process then other forms of defense litigation, with the exception of copyright defense, which presents many of the same issues discussed here. This article presents an overview to assist DRI members in accomplishing that goal. First an overview of basic trademark law is presented to provide the statutory and common law framework needed to defend these matters. Second, the article discusses the provisional remedies available to a trademark plaintiff, and how the defendant, its counsel, and its insurance carrier should respond. Third, this article discusses the need for early assessment of both the facts and applicable law, which is a good idea in any case but particularly apt in a matter involving alleged trademark infringement. Finally, the article discusses settlement considerations that typically involve more than monetary considerations. Trademark Basics A trademark is a word, group of words, symbol, product shape, sound, or color used to identify and distinguish [a company s] goods from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. 15 U.S.C. 1127. Trademark law protects a mark if it is distinctive, i.e., if the mark is fanciful, arbitrary, or suggestive. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Trademark law does not protect generic marks (think zipper ), marks that merely describe the product to which they are attached (facial tissue), marks that misdescribe the products to which they are attached ( Orange Goodness for a grapefruit product), or marks that primarily describe the goods to which they pertain geographically ( Sonoma Valley Wine for wine made in upstate New York). 15 U.S.C. 1052. One exception is that descriptive marks can become distinctive and thus eligible for trademark registration if they acquire a secondary meaning through use. See, e.g., Christian Louboutin, et al. v. Yves Saint Laurent S.A.S, et al., 778 F. Supp. 2d 445 (S.D.N.Y. 2011). The basis of an action for trademark infringement is that there is likelihood that one mark creates confusion with another mark. 15 U.S.C.A. 1114(1)(a). To prevail in a trademark infringement action, a plaintiff must prove (1) ownership of a valid trademark; (2) use by a defendant of a similar mark; and (3) that the defendant s use is likely to confuse the public. Lindy Pen Co. v. Bic Pen Corp. 725 F.2d 1240 (9th Cir.1984). Validity of the Mark Trademark law presumes that if a trademark is registered with the U.S. Patent and Trademark Office it is valid. 15 U.S.C. 1115. If a mark is not registered, a plaintiff will have to show two things: (1) it would otherwise qualify as a trademark, meaning that it is arbitrary, fanciful, or merely suggestive; and (2) the plaintiff was the first to use the mark in interstate commerce. Use by the Defendant in Commerce The Lanham Act defines use in commerce as follows: 1) on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and 2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce. 15 U.S.C. 1127. By requiring the use prong, trademark law ensures that trademark owners cannot assert that they have a right to control the use of specific words generally. Likelihood of Confusion To find whether using one mark creates a likelihood of confusion with another, the courts undertake a multifaceted inquiry, which includes evaluating the following factors: Strength of the mark Similarity of the marks Proximity of the goods or services Evidence of actual confusion Marketing channels used Types of goods and the care likely to be exercised by the purchaser A defendant s intent in selecting the mark Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir. 2008). No one factor is more important than any other factor. Id. To be clear, not all circuits employ all of these factors, and instead some add their own, different factors. The above factors, however, are widely When comparing the marks for similarity, courts take a common sense approach. Courts will examine the look of the marks, their sound, and their overall impression to determine similarity. used to determine whether there is a likelihood of confusion. When examining the strength of the mark, courts are generally focused on consumers ability to identify a plaintiff s mark in the marketplace. The more known a plaintiff s mark is to the consuming public, the more this factor weighs in favor of the plaintiff. When comparing the marks for similarity, courts take a common sense approach. Courts will examine the look of the marks, their sound, and their overall impression to determine similarity. The proximity of the goods or services factor examines the competitive proximity of the plaintiff and defendant s marks: do they sit next to each other on store shelves or do they exist in the same general commercial sphere. The more proximal or related the parties products or services are, the more this factor weighs in favor of a plaintiff. Evidence of actual confusion is supremely helpful to a plaintiff s case. However, the cost of conducting reliable surveys is difficult for the Davids of the litigation For The Defense January 2014 77

INTELLECTUAL PROPERTY LITIGATION world, making such proof difficult to come by. Nonetheless, and obviously, if a plaintiff is able to show actual confusion, this factor will weigh heavily in its favor. When looking at the marketing channels used by each party, the courts generally identify the consumer of the products and how the products get to that consumer. For instance, if both parties marks are In addition to the equitable doctrines of laches, estoppel, and unclean hands, a defendant has a few additional defenses unique to trademark law. affixed to thermometers, but the plaintiff s thermometers are meant for commercial kitchens and the defendant s thermometers are for use with infants, courts would not likely consider the marketing channels similar. Moreover, in that scenario, a plaintiff would advertise in trade magazines and websites and the plaintiff s customers would purchase from wholesale or commercial dealers, while a defendant would advertise in parenting magazines and websites and the defendant s customers would buy the product from a drug store. The types of goods and the care likely to be exercised by a purchaser is a factor that examines the sophistication of the buyer and the expense of the product at issue. Taking the thermometer example, assume that the plaintiff s thermometer costs $1,000 and the defendant s costs $8.99. In that scenario, the individual buying the plaintiff s model would approach spending that amount of money cautiously and would likely know that a small $8.99 thermometer is not what he or she needs. Likewise, parents of infants would not likely accidentally spend $1,000 on a thermometer, no matter how worried they were. Finally, a court will examine a defendant s intent in selecting the mark that it 78 For The Defense January 2014 did. Whether a defendant intended to trade on the plaintiff s name recognition would likely become apparent during discovery. Finding an e-mail from the marketing department advising the product development department that it would help sales to use a product name similar to a competitor s would be a homerun. However, even without that hot document, the similarity of a defendant s mark may indicate such an intent obvious. Evidence of actual confusion goes a long way to proving trademark infringement. Though showing actual confusion is helpful, it is difficult and costly to prove. Also, it is not necessary to prove actual confusion to prevail. Only a likelihood of confusion is required, which a plaintiff can prove through circumstantial evidence aided by expert testimony and statistical analysis. Other Causes of Action While the rules explained above come from the federal trademark act, the Lanham Act, trademarks are protected under either state or federal law, regardless of whether they are registered. Under federal law, trademark infringement and trademark dilution, under which a confusingly similar, but non-competing mark reduces a famous mark s ability to identify goods and services, are the two most prominent causes of action. But a number of other causes of action arise under either or both the Lanham Act and common law unfair competition, including passing off, false advertising, and misappropriation. Passing off (or palming off, as it is sometimes called) a cause of action under federal and often state law, occurs when a producer misrepresents his own goods or services as someone else s. Reverse passing off, as its name implies, is the opposite: a producer misrepresents someone else s goods or services as his or her own. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 n.1 (2003) (internal citations omitted). False advertising is also available under the Lanham Act as well as under state laws. Under federal law, false advertising requires a plaintiff to prove that a competitor made a claim about the plaintiff s goods or services that was either false on its face or likely to deceive consumers, the misrepresentation was material, and it would have an effect on the consuming public. Finally, misappropriation, available under state common law, is a catchall cause of action that typically requires a plaintiff to prove that 1) the plaintiff has made a substantial investment of time, effort and money into creating the thing misappropriated, such that the court can characterize the thing as a kind of property right, 2) the defendant has appropriated the thing at little or no cost, such that the court can characterize defendant s actions as reaping where it has not sown and 3) the defendant has injured plaintiff by the misappropriation. Hollywood Screentest of Am., Inc. v. NBC Universal, Inc., 151 Cal. App. 4th 631, 650 (2007). Defenses Trademark law is equitable and thus litigants are able to assert traditional equitable defenses. In addition to the equitable doctrines of laches, estoppel, and unclean hands, a defendant has a few additional defenses unique to trademark law, including That the trademark registration was obtained fraudulently; That the registrant abandoned the mark; That the trademark owner gave the defendant permission to use the mark; That the trademark is not being used as a mark, but rather is the defendant s name, or is a term that describes the defendant s goods and is used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; That the defendant began using the mark without knowledge of the plaintiff s use and has continuously used the mark since prior to the plaintiff s registration; That the mark has been or is being used to violate the antitrust laws of the United States; That the mark has been abandoned; or That the mark is functional. 15 U.S.C.A. 1115(b). Fair use, prior use, and abandonment are some of the most common defenses in trademark cases. Fair use in trademark cases is similar to the same doctrine in copyright cases. It allows a non-owner

to use the mark for commentary or criticism as long as the use is not akin to a trademark, affixed to goods or services in interstate commerce. For instance, when Saturday Night Live parodies C-SPAN and uses the C-SPAN trademark at the bottom of the screen, the use is permissible as a sometimes funny social commentary. If Saturday Night Live began selling merchandise using the C-SPAN logo, however, there would likely be a problem. Another fair use would be accurate comparative advertising, such as those comparisons often seen in toilet paper and paper towel advertisements. Prior use is akin to proving that a plaintiff s mark is really junior to a defendant s. If a defendant can show that it used a mark in commerce continuously since before the time that the plaintiff registered its trademark, the continuous use doctrine is a viable defense. It is one that essentially undermines the validity element of a plaintiff s case. A defendant can similarly attack that element by arguing that a plaintiff s mark is not arbitrary, fanciful, or suggestive; that the plaintiff has abandoned the trademark if the plaintiff hasn t used the mark in three or more years; or that the trademark registration was gained through perpetrating fraud on the U.S. Patent and Trade Mark Office. Provisional Remedies Everyone has heard about them: temporary restraining orders, preliminary injunctions, and asset seizures. They are potentially a reality in trademark litigation and a staple in most. Each has its own issues, but all share the common denominator: speed. Unlike typical forms of civil litigation, a defense attorney in trademark litigation might not have 21 to 30 days or longer by stipulation to respond to a complaint, and indeed, with asset seizures, he or she will not learn of a lawsuit until after an unannounced visit from local or federal authorities. Each provisional remedy presents its own pitfalls and opportunities when defending trademark litigation and should be analyzed separately. Temporary Restraining Orders Temporary restraining orders are commonly served at the same time as a verified complaint, with an affidavit or declaration supporting the need for immediate relief. Essentially, temporary restraining orders (TROs) are used to maintain the status quo between the parties for a short period of time, usually 10 to 14 days, allowing the parties to attempt to resolve the issues presented by the litigation, or if failing in that, to prepare for other expedited proceedings such as a preliminary injunction hearing. A request for a TRO may be made to a court with or without notice to the defendant. Typically, notice is provided except in the most exigent circumstances. If a TRO is sought without notice, a court generally will scrutinize the basis for the request and the lack of notice. Assuming notice is given, it will usually be provided with the minimal amount of time required by a court s local rules and may be brought as an emergency motion or otherwise on short notice. The resulting implications due to a short notice are significant. Even assuming the client being sued for trademark infringement provides you with a copy of the verified pleadings and the motion for temporary restraining order on the date was served, defense counsel will have only one or two days, at best, to analyze the complaint, confer with the client, test any verified allegations against facts known to the client or others, determine whether the plaintiff has demonstrated need for the TRO based on the underlying factors, determine whether there are any infirmities with the verified pleadings, determine whether there are any infirmities that counter any of the factors on which granting TROs are based, and gather any other information that might bear on the issues presented by the request for the TRO. TRO hearings are, essentially, nonevidentiary hearings. Thus, the only evidence that a court generally will rely on is the allegations contained in the verified complaint, or those contained in a properly executed affidavit or declaration. More often than not defense counsel will not have time to prepare counter affidavits or declarations, and indeed some courts will not accept them, preferring to determine whether a plaintiff has met its burden for obtaining a TRO and waiting until a preliminary injunction hearing to accept other evidence. Although jurisdictions may vary the wording slightly, essentially a plaintiff will need to establish the following elements to obtain a TRO: 1. The plaintiff has a clearly ascertainable right that needs protection; 2. The plaintiff will suffer irreparable harm if the court does not grant injunctive relief; Everyone has heard about them: temporary restraining orders, preliminary injunctions, and asset seizures. They are potentially a reality in trademark litigation and a staple in most. 3. The plaintiff has inadequate remedy at law ; 4. The plaintiff likely with succeed on the merits; and 5. The balance of hardships weighs in the plaintiff s favor. Once defense counsel has had an opportunity to confer with a client, counsel can assess which elements are most ripe for attack when objecting to the request for a TRO. The last element the balance of hardships weigh in the plaintiff s favor is not stated as such in all jurisdictions but is without a doubt one of the most contested points during any TRO hearing. Courts are clearly disinclined to grant relief, no matter how temporary, if by doing so they cause more harm than good to all of the participants. A strong line of defense can be developed by presenting how a plaintiff s requested relief will harm the defendant. At the TRO stage, often a court will evaluate the first two elements in a plaintiff s favor, but not always, and attacking the plaintiff s ascertainable right and alleged irreparable harm should never be overlooked. These elements, in turn, determine in large part For The Defense January 2014 79

INTELLECTUAL PROPERTY LITIGATION whether a plaintiff has adequate remedy at law, and they can be argued in opposition to a motion for a TRO. Finally, the extent to which a court allows argument regarding the potential for success on the merits varies widely, and thus defense counsel needs to assess as early as possible the infirmities in a plaintiff s allegations and the defendant s potential defenses. A request for a TRO may be made to a court with or without notice to the defendant. Preliminary Injunctions A plaintiff can bring a motion for preliminary injunction along with a request for a temporary restraining order, by itself at later date, or by itself instead of a request for a TRO. Regardless of how it is presented, a preliminary injunction request has both similarities to and differences from a request for a TRO. In most jurisdictions requests for preliminary injunctions require the same elements as those required for TROs. Thus, the same lines of attack applicable to objecting to TROs are applicable to objecting to preliminary injunctions. The analysis of these elements changes, however, because unlike a TRO, which has limited duration, a preliminary injunction can last for weeks or even months, until a court completes a fullblown trial on the merits. In practice, cases often resolve at the preliminary injunction stage because a court will determine a plaintiff s potential success on the merits based on considering at least some portion of the evidence. The evidentiary aspect of a preliminary injunction hearing sets it apart from TRO hearing. Usually, before a court holds a hearing to determine whether it will issue an injunction, the parties can engage in limited discovery, which is usually limited to focused written discovery and only those depositions essential to the issues raised directly by the request for preliminary relief. While discovery is limited to the 80 For The Defense January 2014 needs of the prosecution and the defense of the preliminary injunction, those needs are sometimes substantial enough that fullblown discovery might not matter to the outcome of the case. When further discovery might make a difference for example when determining damages might require expert analysis, or when the parties need to take further depositions related to issues other than those related to the relief sought in the preliminary injunction, then the matter will continue. But it will do so with the court having made determinations on at least some of the case issues. This might drive the direction of both the prosecution and the defense of the case and might also lead to settlement options that did not exist before the preliminary injunction ruling. A TRO hearing does not have this effect since these orders typically last for very limited period of times and courts grant them based on little or no evidence. Permanent Injunctions A trademark plaintiff also typically will request a permanent injunction. While plaintiffs rarely pursue such a remedy in other types of civil litigation, due to the nature of the cases, this remedy is a mainstay of trademark litigation. Property Seizures While not as common as TRO or preliminary injunction requests, property seizures sometimes occur in matters involving trademark infringement. Litigation will inevitably follow, but it is, for the moment, the least of a defendant s problems. A defendant may be criminally charged, requiring criminal counsel to become involved. Counsel for a defendant needs immediately to determine whether all documents on which a seizure was based are properly worded and executed. Property seizures typically require a plaintiff to post a security bond in the event that the seizure is improper, and counsel should ascertain that the security bond is in place. Counsel should then make sure that any seizure is limited to only those goods that are required to be seized, and nothing more. All this reviewing activity typically takes place after property has been seized and taken from a client s possession. Regardless of when the inevitable civil litigation will be initiated, counsel needs immediately to begin determining not only the specific bases for a property seizure, but the more general bases for a plaintiff s actions against the defendant. Property seizures involve claims of piracy, a far more serious allegation than trademark infringement, which might not necessarily be willful. Early Assessment Regardless of whether a plaintiff seeks provisional remedies in a case, an early assessment of the merits, defenses, and damages in any trademark litigation goes a long way to ultimately favorably resolving the dispute. Obviously, when faced with a motion for TRO or preliminary injunction, assessment is essential. In cases involving property seizure, case assessment necessarily has to follow the immediate needs presented by the seizure. An early assessment should analyze the strength of the merits of a plaintiff s case, the defenses available to a defendant, the extent of the potential damages in the case, including whether statutory, enhanced, and exceptional circumstance damages could exist, the defendant s willingness to relinquish its trademarks or trade dress, and the availability of insurance for liability or defense. A thoroughly prepared early assessment can be expensive and time-consuming, but ultimately it pays dividends in setting the defense of trademark litigation on its proper course in determining whether to recommend settling the matter or taking it all the way to a trial. Damages A successful plaintiff may receive a number of different monetary damages for proven trademark infringement. 15 U.S.C. 1117. First, a plaintiff may be entitled to an award measured by the defendant s profits. This is one way of determining a plaintiff s losses or the proper measure of damages under an unjust enrichment theory. A plaintiff also may receive an actual damages award. This is determined by proof of a plaintiff s actual losses either of business or profits caused by the defendant s use. If a court finds that a defendant is liable for using a counterfeit mark a mark that is identical, or nearly identical, to a mark previously registered then the court

may assess statutory damages according to this formula: (1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just; or (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just. 15 U.S.C.A. 1117. In addition, treble the damages are available. An award of treble damages is within a court s discretion but only if willful or intentional infringement is found. 15 U.S.C.A. 1117. As one court stated, however, Congress has indicated that it will be a rare case in which a defendant who has trafficked in goods or services using a mark that he or she knows to be counterfeit can show that he or she should not be assessed treble damages. Microsoft Corp. v. CMOS Technologies, Inc., 872 F. Supp. 1329, 1339 (D.N.J. 1994) (quoting Joint Explanatory Statement, 130 Cong. Rec. H. 12,076 at 12,083 (Oct. 10, 1984)). Finally, in exceptional cases, reasonable attorney s fees may also be awarded. The Lanham Act does not define exceptional, and case law interpreting the Lanham Act has been uneven. Some courts have found that a plaintiff does not need to have acted in bad faith for a defendant to be awarded fees, although bad faith is an appropriate factor to consider in making the determination. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1156; S Indus. v. Centra 2000, Inc., 249 F.3d 625, 627. Other courts require a defendant to establish bad faith by a plaintiff. Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 194 95 (2d Cir. 1996) (requiring the defendant to show plaintiff s bad faith). Federal courts have consistently held, however, that a district court must make a finding of culpable conduct on the part of the losing party, such as bad faith, fraud, malice, or knowing infringement, before a case qualifies as exceptional. Ferrero U.S.A., Inc. v. Ozak Trading, Inc., 952 F.2d 44, 47 (3d Cir. 1991). See also Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002) (finding that the requirement of exceptionality under 15 U.S.C. 1117(a) is met when the case is either groundless, unreasonable, vexatious, or pursued in bad faith); Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 877 (8th Cir. 1994) (holding that an exceptional case is one in which the plaintiff s action was groundless, unreasonable, vexatious, or pursued in bad faith ); Badger Meter, Inc. v. Grinnell, Corp., 13 F.3d 1145, 1159 (7th Cir. 1994) (describing exceptional behavior for purposes of the Lanham act to be malicious, fraudulent, deliberate, or willful ); Eagles, Ltd. v. Am. Eagle Found., 356 F.3d 724, 728 (6th Cir. 2004) (describing that a case is not exceptional for purposes of the Lanham Act unless the infringement was malicious, fraudulent, willful, or deliberate ); Gracie v. Gracie, 217 F.3d 1060, 1071 (9th Cir. 2000) (holding that [e]xceptional circumstances can be found when the non-prevailing party s case is groundless, unreasonable, vexatious, or pursued in bad faith ). Settlement Considerations Settling trademark infringement cases also present unique challenges. Unlike other forms of civil litigation, it is not uncommon that the plaintiff will be the bigger of the two parties, or at least defendant s equal, will employ sophisticated counsel, and will have more resources, both in-house and externally than will the defendant. Trademark infringement litigation is rarely done on the cheap as a result. But because trademarks bear an enormous amount of goodwill parties will also spend on this litigation. The goodwill, in turn, makes trademark litigation a higher stakes proposition than other forms of commercial litigation precisely because the trademark holder s identity is what is at stake, and a defendant is often accused of piracy, theft, and malicious behavior. On the other hand, because a defendant in trademark litigation often has the lesser resources of the two parties involved in the lawsuit, protracted litigation, irrespective of the parties respective positions, is not an option. Creative solutions, early on, thus need to be explored. Even if a defendant has financial resources, either its own or through insurance coverage, typical remedies sought in trademark litigation include the defendant relinquishing some or all of the rights in the trademark or trade dress at issue. The more attached a defendant is to its trademark or trade dress, the more difficult it may be to resolve the litigation. Thus, early assessment and creative solutions are essential to resolve litigation favorably to a trademark defendant. Although each case presents unique challenges, certain solutions should always be considered. First, consider how much a client has invested on marketing and advertising. If a client has not yet spent a significant An award of treble damages is within a court s discretion but only if willful or intentional infringement is found. amount of money on its marketing campaign, it might be easier to explore some aspects of altering the client s mark. Second, explore whether a client can live with a licensing agreement. A licensing agreement will require capitulation from both parties in a case. The plaintiff has to be comfortable with a similar, yet not-so-competitive mark in the marketplace while the defendant has to relinquish some control with respect to growing its brand. Third, and perhaps obviously, when representing a defendant, if the plaintiff has presented evidence of actual confusion, think about a swift resolution. In such a case, fighting until the end could result in a client incurring punitive damages that it might otherwise avoid. Conclusion Trademark litigation presents unique considerations for defense counsel, primarily because he or she must respond immediately to the challenges posed by a plaintiff s claims, the specter of provisional remedies, as well as unique issues pertaining to proof and defenses, the potential for significant damages, and often, well-heeled and well-represented plaintiffs. Meeting these challenges provides a satisfying experience but requires energetic effort, diligence, and constant evaluation of your client s position. For The Defense January 2014 81