The Must-Have Guide to the Trademark Litigation Process

What are trademark rights?

Trademark rights come from using a mark in commerce, and federal registration with the USPTO makes them stronger and nationwide. A registered owner can sue anyone whose mark is likely to confuse customers about who makes the goods or services. See what a trademark means.

What claims are brought in a trademark lawsuit?

• Infringement. Using a mark likely to cause confusion with yours, the core claim in most cases. Courts weigh factors such as how similar the marks and the goods are and any actual confusion, see likelihood of confusion.
• Unfair competition and false designation of origin. Misleading customers about where goods come from, available even for unregistered marks.
• Dilution. Weakening a famous mark by blurring or tarnishment, even without confusion, see trademark dilution.
• Cybersquatting. Registering a domain name confusingly similar to a mark in bad faith.
• Counterfeiting. Using a spurious copy of a registered mark, which carries heavier remedies, see how to deal with knock-offs.

What are the stages of the trademark litigation process?

What is a preliminary injunction?

An order that stops the defendant from using the mark while the case goes on, so the damage does not continue for the months or years before trial. The owner must show it is likely to win and will be harmed without the order, and a trademark owner who shows likely success is presumed to suffer irreparable harm.

What remedies can a trademark owner get?

A court can order the infringer to stop, and award the infringer's profits, the owner's damages and court costs. Attorney fees are possible in exceptional cases, and counterfeiting can bring enhanced damages. Read about legal remedies for trademark infringement.

What defenses are raised against trademark infringement?

Common defenses include no likelihood of confusion, fair use of a descriptive term, nominative use to refer to the owner's own product, abandonment or genericness of the mark, and delay by the owner in acting. See what to do when threatened with a trademark infringement lawsuit.

Court vs the TTAB, what is the difference?

The Trademark Trial and Appeal Board decides only whether a mark can be registered or should be cancelled. It cannot stop someone from using a mark or award damages, so infringement is decided in court. See the TTAB opposition process.