Trademark Infringement LawsuitWhat is trademark infringement? In a nutshell, trademark infringement is the unlawful use of an established trademark or a confusingly similar one with the same or similar goods or services.

Depending on the circumstances, a trademark owner who believes its mark is being infringed may file a civil lawsuit in either state or federal court. For a variety of reasons, most trademark infringement matters arise in federal court.

Proving Allegations of Trademark Infringement

How does a trademark owner prove infringement? A plaintiff alleging trademark infringement must prove (1) that it owns a valid mark, (2) that it has priority (its rights in the mark(s) are “senior” to the defendant’s), and (3) that the defendant’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. When a plaintiff owns a federal trademark registration, there is a legal presumption of the validity and ownership of the mark, as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.

What type of evidence will the courts consider?  Courts will consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors typically considered include the degree of similarity between the marks at issue and whether the parties’ goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source. Other factors that courts will often consider include how and where the parties’ goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant’s intent in adopting its mark; and the strength of the plaintiff’s mark.

Defenses to Allegations of Trademark Infringement

A defendant can use descriptive words to accurately convey information about its goods or services regardless of the plaintiff’s trademark rights. This is a form of “fair use”, and is readily recognized in the law.  Another limitation on a trademark owner’s rights is geographic remoteness, meaning that if an unregistered trademark is only used in a single state, for example, the trademark owner has no rights to assert claims against a competing trademark owner in another state.  Other possible defenses include: a) that no likelihood of confusion exists because the parties’ marks are different; b) the goods/services sold with the marks are different; c) the target consumers are different; d) the parties advertise and sell through different marketing channels; and e) the parties have coexisted for a long period of time without consumers being actually confused.

Remedies for Unlawful Trademark Infringement

If the trademark owner is able to prove infringement, available remedies they may obtain include the following: (1) a court order (injunction) that the defendant stop using the accused mark; (2) an order requiring the destruction or forfeiture of infringing articles; (3) monetary relief, including defendant’ profits, any damages sustained by the plaintiff, and the costs of the action; and, (4) in appropriate cases, an order that the defendant pay the plaintiffs’ attorneys’ fees. Given these broad remedies, the cost of losing a trademark infringement matter are often enormous.


If you are involved in a trademark infringement matter, contact the dedicated and trusted trademark attorneys at Gehres Law Library today for a free evaluation. Our experienced trademark attorneys can provide you with an opinion as to the validity and strength of each claim and help you achieve the best possible outcome in your case.