What is Considered Trademark Infringement?
To understand trademark infringement, we first must look to the definition of a trademark or service mark and understand the rights and protections associated with it. A…
[SERVICE]Trademark litigation
Trademark litigation attorneys for brand owners and businesses
When someone uses a name or logo too close to yours, or says you are using theirs, we handle it from the first letter to federal court, for brand owners and accused businesses.
Your attorneys
Andrew RapackeManaging Partner · Registered Patent AttorneyFormer Naval Engineering Officer. M.S. in electrical and electronics engineering.
Casey GoldenbergAttorney · Trademarks and Patent ProsecutionTrademarks and patent prosecution, from a scientific background.
Phillip HortonAssociate Attorney · Trademarks and IP LitigationTrademark clearance, prosecution and TTAB matters, plus IP litigation.
[01]Who it's for
For brands someone else is trading on.
Most trademark disputes start online, with a lookalike listing, a domain or an ad, and most end without a trial. The goal is to stop the confusion as quickly and cheaply as the facts allow.
A competitor with a confusing name
A business using a name, logo or packaging close enough that customers mix you up.
Counterfeits and marketplace copycats
Fake goods or lookalike listings on Amazon, Etsy and other marketplaces.
A domain or ad built on your brand
Cybersquatted domains, and ads or pages that use your mark to divert your customers.
A cease and desist letter arrived
Someone claims your brand infringes theirs, and you need to know whether it does.
[02]The claims
What counts as trademark infringement, and what doesn't.
A trademark owner, the senior user, can stop a later user, the junior user, from using the same or a similar mark for related goods or services in a way that is likely to confuse buyers. The Lanham Act gives several claims to do it.
Rights come from use, not only registration. A registered mark is easier to enforce, because registration is evidence of ownership and validity nationwide.
Claims an owner can bring
- Infringement of a registered markUse of a copy or imitation of a federally registered mark that is likely to cause confusion, under 15 U.S.C. 1114.
- Unfair competition and false designationConfusing use of a mark, registered or not, including trade dress and passing off goods as yours, under 15 U.S.C. 1125(a).
- Dilution of a famous markBlurring or tarnishing a mark the general public widely recognizes, even without confusion.
- CybersquattingRegistering or using a domain name confusingly similar to your mark, in bad faith, to profit from it.
- CounterfeitingFake goods bearing a mark identical to, or substantially indistinguishable from, your registered mark.
Usually not infringement
- Descriptive fair useUsing an ordinary word in its plain meaning to describe a product, not as a brand.
- Nominative useNaming your brand to refer to you, like a repair shop listing the brands it services, without implying endorsement.
- Truthful comparative advertisingAccurately comparing a product to yours by name.
- Unrelated goodsThe same word for goods so different buyers would not connect them, unless the mark is famous.
[03]The key question
How courts decide likelihood of confusion.
Almost every infringement case turns on one question. Are buyers likely to be confused about who makes the product, or who sponsors or approves it? Courts answer it with a list of factors, and each federal circuit uses its own version.
Federal courts in Florida, which sit in the Eleventh Circuit, weigh seven factors.
- Strength of the mark. Invented and arbitrary marks get broader protection than descriptive ones.
- Similarity of the marks. Appearance, sound and meaning, judged as buyers meet them.
- Similarity of the goods or services. Whether buyers would expect them to come from the same source.
- Retail outlets and customers. Whether the products are sold in the same places to the same people.
- Advertising. Whether both sides advertise through the same media.
- Intent. Whether the other side meant to trade on your reputation.
- Actual confusion. Misdirected emails, calls, orders or reviews. Often the most persuasive evidence.
No single factor decides a case, and a survey of buyers is often the evidence that tips it. More on likelihood of confusion and what counts as trademark infringement.
[04]Where to fight
TTAB vs federal court for a trademark dispute.
There are two places to fight over a trademark, and they decide different things. The Trademark Trial and Appeal Board decides who can register a mark. A court decides who can use it.
| Trademark Trial and Appeal Board | Federal court | |
|---|---|---|
| What it decides | Whether a mark can be registered, or stays registered | Infringement, unfair competition and dilution, and registration too |
| Can it stop the use | No | Yes, by injunction |
| Money | No damages | Profits, damages, costs, and attorney fees in exceptional cases |
| How it runs | Mostly in writing, with no live trial | Judge or jury, with live testimony |
| Typical trigger | A conflicting application or registration | Ongoing use in the market |
Losing at the TTAB costs a registration, not necessarily the right to keep using a mark already in use, though the Board's findings can carry into a later court case. More on TTAB oppositions and cancellations.
[05]How we handle it
From the first letter to the courtroom.
Running a business while fighting over its name is stressful, and every week of confusion costs customers. We work to get relief as quickly as the facts allow, and most of that work happens before anyone files a lawsuit.
When your brand is being copied
- Build the record. Your first-use dates, your registration, the infringing use and every instance of actual confusion.
- Send a cease and desist letter. A clear demand, backed by the evidence, resolves many disputes.
- Use the platforms. Marketplace, domain and ad complaints, which often work in days.
- Oppose or cancel at the TTAB. When the other side is trying to register a conflicting mark.
- Sue, with a preliminary injunction if needed. When the use continues and the harm is real, in federal court.
Our team includes Andrew Rapacke, the managing partner, admitted in the Southern and Northern Districts of Florida and the Eastern District of Texas, and Phillip Horton, whose work covers trademark clearance, prosecution, TTAB matters and IP litigation. For a deeper dive, download the trademark litigation guide.
[06]If you are accused
Received a trademark cease and desist letter?
Don't ignore it, and don't rebrand overnight. A letter is a claim, not a ruling. Many are overstated, and the right answer depends on who used the mark first, how close the marks and goods really are, and what it would cost each side to fight.
What we look at first
- Priority. Who used the mark first, where, and for what. A senior user may have rights the letter ignores.
- Confusion. Whether the marks, goods and buyers really overlap, factor by factor.
- Their registration. Whether it is vulnerable to cancellation, for example for nonuse, abandonment or genericness.
- Defenses. Fair use, nominative use, delay that prejudiced you, and acquiescence.
Your options
Reply and negotiate, agree to coexist with limits on how each side uses its mark, phase in a new brand on a timeline you control, petition the TTAB to cancel their registration, or, when the threat is serious, ask a court to declare that you do not infringe.
More in threatened with a trademark infringement lawsuit, what to do.
[07]Remedies
What remedies are available for trademark infringement?
The Lanham Act lets a court stop the infringement and award money. What a court orders depends on the evidence, and no lawyer can promise a result.
- Injunction. An order to stop the use. Since the Trademark Modernization Act of 2020, a trademark owner who shows likely success on the merits gets a rebuttable presumption of irreparable harm, which matters most for a fast preliminary injunction.
- Profits and damages. The infringer's profits, your damages and costs. A court can raise damages up to three times the actual amount, as compensation rather than a penalty. Willful infringement is not required for an award of profits.
- Attorney fees. Only in exceptional cases, and in most intentional counterfeiting cases.
- Counterfeits. Three times profits or damages for intentional counterfeiting, or statutory damages of $1,000 to $200,000 per counterfeit mark per type of goods, up to $2,000,000 if willful.
- Cybersquatting. Statutory damages of $1,000 to $100,000 per domain name, and transfer of the domain.
- Destruction. Infringing labels, packaging and the means of making them delivered up and destroyed.
More on legal remedies for trademark infringement and trademark dilution.
[08]Fees
Fees quoted after a case review.
Every trademark dispute is different, so there is no list price. We review the facts and the documents first, then quote the fee for the work in front of you before any of it begins.
Book A Free Strategy CallWhat sets the cost
- Whether a letter, a platform complaint or a TTAB filing can resolve it, or it needs a lawsuit
- How urgent the harm is, and whether a preliminary injunction is needed
- Survey and damages experts, and the scope of discovery
- How many infringers, marketplaces or domains are involved
Many disputes are settled with a demand letter or a negotiated agreement long before trial, and the quote reflects the stage you are at. Litigation is not covered by The RLG Guarantee.
[09]The process
From the first call to a resolution.
Most trademark disputes resolve before trial. Timing shown is typical, never a promised date.
Trademark disputeReview to resolution
- Day one01Day oneCase review callFree. The marks, the use and what you want to happen.
- First weeks02First weeksEvidence and priorityWho used it first, and how strong each side's position is.
- Early03EarlyLetter or responseA cease and desist letter, or the reply to one.
- If needed04If neededPlatform or TTAB actionTakedowns, UDRP, or an opposition or cancellation.
- If needed05If neededFederal lawsuitWith a preliminary injunction where the harm is urgent.
- 06ResolutionCoexistence, a rebrand, a settlement or a court decision.
[10]Online
Trademark infringement on marketplaces, domains and ads.
Much of today's infringement is online, and much of it can be stopped without a lawsuit.
Marketplaces
Amazon, Etsy and other marketplaces have their own reporting tools, and a registered trademark unlocks the strongest of them, such as Amazon Brand Registry. See the Amazon trademark complaint guide and takedown notices on Etsy.
Domain names
A cybersquatted domain can be recovered through a UDRP complaint, a faster arbitration process that transfers or cancels the domain but awards no money, or through a federal cybersquatting claim that can also award statutory damages.
Search ads
Bidding on a competitor's brand as a keyword is generally not enough, on its own, to infringe. Ads that use your mark in a confusing way can be, and the ad platforms have trademark complaint procedures. More on stopping competitors using your trademark in Google Ads.
[11]Before a dispute
Why a registration matters when you have to enforce.
You can enforce an unregistered mark, but you start from behind. A federal registration does much of the proving for you.
- Evidence of ownership and validity. A registration is presumed valid, so the other side has to disprove it.
- Nationwide priority. Your rights reach the whole country from the filing date, not just where you trade.
- Stronger remedies. Counterfeiting remedies and statutory damages depend on a registered mark.
- Marketplace and customs tools. Brand registry programs and recording the mark with US Customs to stop imports.
If your brand is not registered yet, start there. Our trademark registration is one flat fee, known before you start.
[12]Questions
Questions about trademark litigation.
Found a copycat, or got a letter? Your first call is free and comes with a straight answer on where you stand.
Book A Free Strategy CallWhat is trademark infringement?
Using a mark that is the same as or similar to someone else's, for related goods or services, in a way that is likely to confuse buyers about who makes the product or who sponsors or approves it. It applies to registered and unregistered marks.
What does a trademark litigation attorney do?
Evaluates whether a use infringes, sends or answers cease and desist letters, files marketplace and domain complaints, handles oppositions and cancellations at the TTAB, and brings or defends infringement lawsuits in court, including requests for preliminary injunctions.
What should I do if I receive a trademark cease and desist letter?
Don't ignore it and don't make any admissions in a reply. Keep records of when and how you started using your mark, then have an attorney check priority, likelihood of confusion and the strength of their registration before you respond. Many letters overstate the claim.
How do I stop someone from using my trademark?
Usually in steps. Document the use and any confusion, send a cease and desist letter, use marketplace and domain complaint procedures, oppose any application they file, and sue if the use continues. A federal registration makes each step easier.
Can I sue if my trademark is not registered?
Yes. Section 43(a) of the Lanham Act protects unregistered marks against confusing use, and state common law protects them where you trade. You have to prove the mark is distinctive and that you used it first, which a registration would otherwise help establish.
What can I recover in a trademark infringement lawsuit?
An injunction, the infringer's profits, your damages and costs, damages increased up to three times as compensation, and attorney fees in exceptional cases. Counterfeiting and cybersquatting also allow statutory damages. What a court awards depends on the evidence.
Is there a deadline to sue for trademark infringement?
The Lanham Act has no fixed statute of limitations, but courts apply laches, and many borrow a state deadline to judge whether a delay was unreasonable. Waiting also weakens a request for a preliminary injunction, so act when you find the infringement.
What is the difference between the TTAB and a trademark lawsuit?
The Trademark Trial and Appeal Board decides only whether a mark can be registered or stay registered. It cannot award damages or stop anyone from using a mark. A federal court can do both, and can also order a registration cancelled.
What is trademark dilution?
Use of a famous mark that weakens its distinctiveness, by blurring or by tarnishing its reputation. Only marks widely recognized by the general public qualify, and confusion does not have to be shown.
Which attorney can handle trademark opposition and cancellation proceedings?
A US-licensed trademark attorney who practices before the TTAB. We handle oppositions and cancellations for brand owners and for applicants whose marks are challenged.
How much does trademark litigation cost?
It depends on whether a letter, a platform complaint or a TTAB filing resolves it, or it goes to court, and on the experts and discovery involved. We quote the fee after a case review and before any work begins.
[13]Learning Center
Go deeper on trademark infringement.
Legal Remedies for Trademark Infringement
Trademark infringement is one of the most common forms of trademark-related litigation. Individuals who have had their trademark rights infringed upon sue the…
I’ve Been Threatened with a Trademark Infringement Lawsuit! What Do I Do?
Got a cease and desist letter accusing you of trademark infringement? Here is what to do first, how to respond, and the defenses that may be available to you.
[14]Client reviews
What clients say about working with us.
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Reviews reflect individual client experiences. Quotes are excerpts. Prior results do not guarantee a similar outcome. *#1 top reviewed means the most public client reviews on Google, Trustpilot and Avvo of any US patent or trademark firm.
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