Trademark Infringement Defense – Hire a Top Trademark Lawyer


Fundamentally, a ‘trademark infringement defense’ is one where a defendant (or more preliminarily, an accused) seeks to argue and ultimately prove that his trademark does not infringe on the trademark rights of another.  This defense is brought to rebut arguments by the plaintiff that the defendant used his trademark or service mark in an unauthorized way, in conjunction with sufficiently similar goods/services (engaging in “trademark infringement.”) Infringement isn’t necessarily only triggered when the trademarks in question are an exact or identical copy: the prospective trademark merely has to be similar enough to engender consumer confusion. More on this shortly.

What is Trademark Infringement?


Trademark Infringement Law

15 U.S.C. § 1114 [LANHAM ACT § 32(1)]

Any person who shall, without the consent of the registrant—

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in

connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in

connection with which such use is likely to cause confusion, or to cause mistake, or to deceive shall

be liable in a civil action by the registrant for the remedies hereinafter provided.


Trademark Infringement in Plain English

Trademark infringement occurs, most plainly, when there is a plausible claim of consumer confusion.  Simply, when a customer viewing the new mark would likely assume that the good/service it is attached to is somehow associated with the company that produces a different good/service that is identified by a similar trademark.


Trademark Infringement Defenses

Defendants in trademark infringement cases typically rely upon one or more of the following arguments:

Doctrine of Laches

(1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense,” Nat’l R.R. Passenger Corp. v. Morgan , 536 U.S. 101, 121-22 (2002)

SImply, the plaintiff took an unreasonable amount of time to file the infringement claim and should therefore now be barred from bringing it



The affirmative defense of estoppel consists entails the defendant arguing that the plaintiff was excessively tardy in filing the infringement suit and the defendant relied on the silence of the plaintiff to assume an acquiescence of the trademark’s use.  It would now be unfair, so the argument goes, to now penalize the defendant for this reliance at this detriment.


Fair Use/Collateral use

Both of these defenses is based on the idea that the First Amendment provides robust protections and if the allegedly infringing trademark is not used with the purpose to profit from the trademark, as such, no trademark infringement should be found. Fair Use, for example, covers trademarks that are used for informational, editorial, and comparative purposes.  Collateral use is a legal theory which specifically refers to the right of a defendant to use a trademarked item as part of a bigger product or project, so long as that use is not made with the objective of tricking the public into thinking the product is associated or marketed by the original trademark holder.

Make Your Trademark Rock Solid


What’s a STRONG Trademark?

Trademarks that are most creative, distinct, and non-obvious (given the goods/services sold) are those which are the strongest and easiest to defend.

Trademark Infringement Defenses – Be Proactive with a Solid Trademark

In trademark infringement cases, courts will look for common letters, pronunciation, images, associations, and the general public impression of the two competing trademarks. The assigned USPTO examiner will also consider how closely-associated the goods are which are covered by the trademark/s. Pro-tip: don’t strictly rely on the listed, USPTO Class Number, to make a conclusive determination as to the nexus of the relationship between the goods/services of the competing trademarks. The trademark rights of the initial applicant might very well be much more comprehensive than what’s listed.  Speak to a top trademark lawyer to discuss your case in greater detail.

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