the goods, how close are the marks? Is this an intentional rip-off of
my client’s goodwill, and so forth? I go through them all and have
a decent sense of how the case would look to a judge. That’s . . .
what my client wants to know, how good is this case if we go to
court?
Q: Do you look at anything else? Anything on legal merits?
A: Sleekcraft and priority. I make sure the client has priority of
rights in the mark.
Q: Can you explain priority a little?
A: Yes, sure, who is using the mark first. I don’t want to make a
claim and tell them there’s likelihood of confusion and find they
were using first. I’ve just admitted my client infringes (laughing).82
Several lawyers also responded that in addition to the factors
relevant to the prima facie case, they routinely assess whether a
potential target has any obvious defenses to a trademark infringement
claim. When pressed for an example from a recent case, these lawyers
most often mentioned “parody” examples. As one lawyer explained:
A: Parody. I always tell my client not to make a claim in a parody
case. It’s not worth it.
Q: Why not?
A: Messy. You’re not going to win, and it’s a lot of publicity
sometimes, makes the newspapers. Ignore them and they will just
go away. If you persist, you lose your case and get in F.3d.83
The lawyers’ descriptions of their method for analyzing the legal
merits of a copyright case were similarly focused on elements of
proof for copyright infringement, albeit mostly described in
simplified form.84 Many of the interviewed lawyers also indicated that
in most cases their assessment of how meritorious an infringement
claim might be against a potential copyright or trademark target was
generally fairly easy. Some lawyers stated that they knew a good or
bad infringement case on the merits “pretty quickly,” in most cases.