You have gone through the painstaking process of starting a business, developing a brand for your business, namely, your business’ trademark, invested significant time and resources into this development, and suddenly you discover another business is using your exact trademark or a similar one. What can you do?

What are the Elements of a Trademark Infringement Claim?

When a competing business is using an established trademark or a confusingly similar one, that business is engaging in unlawful trademark infringement.  Because branding is such an important part of a business’ identity to consumers, the law provides a venue for trademark owners to seek recourse against infringers.  A trademark owner who believes its trademark is being infringed may file a civil lawsuit in either state court or federal court for trademark infringement, depending on the circumstances.  In most cases, trademark owners choose to file federal infringement cases. To support a trademark infringement claim in court, the trademark owner 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 rights); 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 with the United States Patent and Trademark Office, 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, which simplifies the owner’s burden of proof in infringement cases.

What Factors do Courts Consider in Determining Whether Infringement has Occurred?

Courts will typically consider evidence addressing various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are:

1) the degree of similarity between the marks at issue; and

2) 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 courts may consider include: a) how and where the parties’ goods or services are advertised, marketed, and sold; b) the purchasing conditions; c) the range of prospective purchasers of the goods or services; d) whether there is any evidence of actual confusion caused by the allegedly infringing mark; e) the defendant’s intent in adopting its mark; and f) the strength of the plaintiff’s mark.

Remedies for Trademark Infringement

If the trademark owner is able to prove infringement, available remedies 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 items;

3) monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action; and

4) in rare cases, an order that the defendant, pay the plaintiffs’ attorneys’ fees.


If you believe someone is infringing your trademark, the experienced and dedicated trademark attorneys at Gehres Law Library have the tools to stop this unlawful behavior. We are committed to providing the highest quality services at affordable rates. Contact us for a complementary evaluation. You’ll be glad you did.