Trademark Dilution
Federal trademark dilution claims under the Trademark Dilution Revision Act require proving the mark is famous (nationally recognized by the general public), and that the defendant’s use causes blurring or tarnishment.
Trademark Counterfeiting
Federal trademark counterfeiting claims allow ex parte seizure, statutory damages from $1,000 to $2,000,000 per mark per type of goods, and mandatory attorney’s fees. Criminal referral to federal prosecutors is also available in egregious cases.
Cybersquatting — ACPA Claim
ACPA claims require proving the domain name is identical or confusingly similar to a distinctive or famous mark, and that the defendant registered it with a bad-faith intent to profit. Statutory damages range from $1,000 to $100,000 per domain name.
Trade Secret Misappropriation
Trade secret misappropriation claims under the federal Defend Trade Secrets Act and Texas Uniform Trade Secrets Act require proving the information was a trade secret, the owner took reasonable steps to maintain secrecy, and the defendant misappropriated it.
Work for Hire and Copyright Ownership Dispute
Copyright ownership disputes between clients and independent contractors frequently turn on whether a written work-for-hire agreement exists and whether the work falls within the statutory categories. Assignment is the backup — but it must also be in writing.
Common Law Trademark Rights
Common law trademark rights arise from actual use of a mark in commerce and are limited to the geographic area of actual use. Against a federal registrant, common law rights provide only a defense in the area of prior use — not an affirmative right to expand.
Domain Name and Online Brand Dispute
Domain name disputes can be resolved through UDRP arbitration (faster, cheaper, domain transfer only) or federal ACPA litigation (slower, more expensive, but allows monetary damages). The facts of the registration and use determine which forum is better.
Piercing the Corporate Veil
Veil-piercing claims in Texas require proof of actual fraud or that the entity was used as a tool to perpetrate a fraud. The Texas BOC sets a high bar — but it is a bar that inadequate record-keeping and commingled funds can clear.
Shareholder Derivative Action
Texas derivative actions under the BOC require a shareholder to make a demand on the board before filing suit, unless demand would be futile. The standing requirements, demand futility analysis, and special litigation committee procedures are all potential battlegrounds.
Breach of Commercial Contract
Commercial breach of contract claims in Texas require proving four elements. But calculating and proving damages — lost profits, consequential damages, mitigation — is where most cases are won or lost.