Latoicha Phillips Givens, Esq. answers: 

The top three reasons are:

1. Failure to prosecute infringers.  I cannot tell you how important it is to prosecute (prevent) trademark infringers from unlawfully using your trademark.  If you do not, your trademark is considered weak. Furthermore, if you take no action to prevent infringers and their use of your trademark is overwhelming, you can lose your trademark rights. Essentially, your trademark will lose its uniqueness to your product or service.

2. Abandonment by non-use or change in the nature of goods or services sold under the trademark.  For example, you register your trademark to uniquely identify plumbing services.  Subsequently, you stop providing plumbing services and you now provide medical testing services. However, you do not change the trademark. The trademark originally used to identify plumbing services cannot and will not identify medical testing services.  You must apply for and obtain a new trademark to identify medical testing services.  Also, if you do not actively use a trademark in commerce for three years, it is evidence that you have abandoned the trademark.

3. Genericization of trademark. This happens when a trademark becomes the common name for the goods or services and ceases to function as a source for the goods.  For example, ASPIRIN is an example of a trademark that has become descriptive of goods instead of an indication of a source for a particular good.  So we associate Aspirin with the headache medication instead of a brand like Bayer Aspirin. 

Genericization of a trademark can occur if a commercial campaign or promotion is too successful. A company must take steps to prevent their brand name from becoming generic.   For instance, XEROX Corporation used an extensive advertising campaign which informed consumers to "photo-copy" documents with XEROX machines.  Also XEROX constantly used XEROX "Brand" to identify its products.

Remember, it's all about brand management.  As a trademark owner, you have to manage your brand to ensure that your product is identified correctly, your brand is conveying the correct message, and trademark infringers are prosecuted.

Excellent communications skills are vital: some experts may sound great on paper, but seriously lack verbal communication skills. A winning courtroom manner is probably more important in the US than in Europe – and it may work with one judge but not another.

Other characteristics that an ideal IP expert witnesses should possess include: patience, tact, excellent presentation skills, organizational skills, the ability to produce a clear and concise report on time, a good courtroom manner and a clear and audible voice, a neutral accent that makes the expert easy to understand and, of course, the ability to stand up to robust cross examination.

Copyright infringement – Few companies know enough about copyright law to determine if they have the rights they need to post third-party text, code and/or pictures online.

Fair Use – This goes hand-in-hand with copyright infringement. Fair use is limited to very specific cases. Mere attribution is insufficient to qualify as fair use.

Trademark infringement – Even innocent trademark infringement can result in hundreds of thousands of dollars in damages in addition to your attorney fees. Willful infringement can triple those damages and force you to pay attorneys for both sides.

Failure to register trademarks – If you fail to register your trademark, someone else just might, severely limiting your ability to expand that trademark into new markets.

It is a classic example of how producers can go after an infringing work that is being displayed in their home country. If it is not shown or sold in the US, then they have to file an action in the producing company’s country and under applicable local law.

Regarding the issues of music and film footage being stolen, the issue is no different than a lawsuit dealing with unlicensed sampling of music, despite this specific problem not coming up as often as one would expect it to.

Countering that advantage requires a holistic approach based on four fundamental principles of counter-deception. One, know yourself – recognize that the problem exists and understand your own vulnerabilities. Two, know your adversary – focus on the means that the counterfeiter has at his disposal such as doctrine, training, personnel, experience, and technology. Three, know your situation – counterfeiting has become endemic and ubiquitous so be aware that counterfeiting will be a factor in nearly any commercial situation you encounter. Four, know your channels – Consumers, live by the old adage “consider the source”: what seems too good to be true probably is. Brand owners, more effectively control your supply chain, including your production facilities, to lower the likelihood that unauthorized products are produced or distributed.

David Frazier answers: Most strategies to protect trade secrets during due diligence involve controls on the timing as well as the scope of disclosure.  The more valuable the trade secret at issue, the further along in the negotiation process the parties should be before beginning any substantive disclosure.  Controls on the scope of disclosure can be low tech, such as presenting the secrets to a select group in a "pencils down" in-person meeting – or high tech, such as using "data rooms" that limit access and printing and track those who view the secret material.  

All methods will typically involve an underlying non-disclosure agreement laying out the terms of disclosure, allowed uses, disallowed uses, and requirements if the deal falls through.  For the most sensitive material, a seller may decide to disclose only to a mutually trusted intermediary, who will then provide limited information to the buyer without revealing the underlying secrets.