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Eric Ball

is a Litigation Partner at Fenwick & West, and focuses his practice on trademark litigation and Trademark Trial and Appeal Board disputes. He also has substantial experience in trade secret, copyright and complex commercial litigation matters. In trademark matters, Eric has successfully defended and prosecuted multiple trademark litigations and Trademark Trial and Appeal Board proceedings with a particular emphasis on priority disputes and matters asserting reverse confusion. Eric also has significant international trademark experience including in the EU and key Asian and Latin American markets. With this experience he has successfully defended multiple gaming and social media companies—both startups and established companies—in international trademark disputes allowing for their international expansion.

For more information or to contact Eric, please visit his Firm Profile Page.

Recent Articles by Eric Ball

The Ninth Circuit Writes the Script on Pleading and Proving Reverse Confusion Claims

The Ninth Circuit clarified the requirements for pleading and establishing a trademark infringement claim under a reverse confusion theory in Marketquest Group v. BIC, Case No. 15-55755 (9th Cir. July 7, 2017). The court relieved plaintiffs from having to specifically plead reverse confusion if it is compatible with the theory of infringement alleged in the complaint, and supported a more malleable standard for proving intent in reverse confusion cases. The court also held that good faith is an element—not just a factor—of a fair use defense, and that the fair use defense may only be raised after a likelihood of confusion is established. Marketquest further reinforces courts’ reluctance to decide trademark cases on summary judgment, and makes it more difficult for defendants to dispose of reverse confusion claims through pretrial motions. 

Ninth Circuit Confirms Willfulness is Required to Award Profits in Trademark Cases

As Stone Creek deepens the divide among circuits, the issue of whether willfulness is required for disgorgement of a defendant’s profits in trademark cases is ripe for Supreme Court review… The Stone Creek decision solidifies the Ninth Circuit’s position that willfulness is required for a recovery of profits in trademark cases. This approach is consistent with equitable principles because disgorgement is generally used to deter culpable behavior and deterrence would not be necessary, and would not work, for an innocent infringer. Depending on the facts of a case, trademark law provides sufficient remedies to prevent a likelihood of confusion and compensate a plaintiff for its losses—beyond a defendant’s profits—like an injunction, actual damages and/or corrective advertising. An award of profits can be reserved for willful infringers, without depriving a plaintiff of remedies for non-willful infringement.