Trademark Litigation

Components of a Trademark Infringement Case

In order to successfully mount a trademark infringement lawsuit, the plaintiff must demonstrate that he both has a bona fide right (ownership) to the mark and; the offending trademark is sufficiently similar to the plaintiff’s trademark that it will cause (or better yet, has caused) consumer confusion.

To prove ownership, the individual bringing the lawsuit (plaintiff) may either provide evidence of a registered trademark (Federal or State), or show that that the plaintiff has superceding common law rights to the trademark through use in commerce. A registered trademark provides presumptive rights even during the filing of the trademark application. The plaintiff must further provide evidence demonstrating that the trademark was not only registered but is still in use.  Such evidence may include dated invoices, advertisements, and marketing material.

Remember, the crux of a trademark infringement case is the most essential question of whether or not the allegedly infringing mark would create consumer confusion with the original trademark.

Understanding the Trademark Litigation Process: The Complaint

Fundamentally, the purpose of the complaint is to set the stage for the case; who owns the mark, how, when, why it was infringed, etc.  The idea here is for the plaintiff to effectively communicate the nature of the infringement and how he has been damaged.  It will also consider the nature of the relief sought by the plaintiff including both monetary damages and an injunction on the defendant’s further use of the trademark.  Critically, it is incumbent on the plaintiff to serve the defendant with a copy of the summons and the complaint (providing the defendant a sufficient amount of time and notice to prepare his defense). The defendant now has 21 days to submit and file a response to the complaint.  Here, there are indeed a variety of suitable responses, although they are very often procedural in nature.  Specifically, the defendant will make either jurisdictional claims (the court has no right to hear the case) or claim that there some sort of defect with the complaint itself.  If the defendant feels that the complaint does not sufficiently articulate a cognizable case of trademark infringement, he may file for a motion to dismiss.  Very often, the defendant will for whatever reason not file a response to the complaint at which point a default judgment will be made in favor of the plaintiff.

Understanding the Trademark Litigation Process: Discovery


The discovery process in Trademark Litigations commences after the defendant files an answer to the complaint and lasts a variable amount of time – the facts dictate the process. The purpose of discovery is to uncover the meat of the case – the facts and circumstances which will give power and persuasive arguments to each side of the trademark infringement lawsuit.  Discover, then, consists of:

  • Requests for Production of Documents
  • Interrogatories
  • Requests for Admission
  • Notices of Deposition
  • Oral Depositions
  • Subpoenas

Importantly, Discovery can be a very lengthy and indeed expensive process and it is therefore fairly common for the parties to a trademark infringement case to reach a settlement before even making it to this phase.  If Discover does, however, occur, the facts will likely dictate that the original complaint is amended to account for newly discovered (and important) information.

Understanding the Trademark Litigation Process: Dispositive Motions


Once the discovery phase is over, each side will have some serious decision making to do – just how strong is the case really?  Typically, either the plaintiff or the defendant will now file what is called a Summary Judgement.  Essentially, this motion asserts that given the facts presented during the discovery phase, the case should be concluded and decided in their favor because nothing more can be gained from proceeding – “it’s obvious what the outcome should be!” The granting of a summary judgment motion will end the case but if the judge thinks there is more to be learned and gained from continuing with the process, the case moves to the trial phase.

Understanding the Trademark Litigation Process: Trial


The Trial is where all of the magic happens and consists of the plaintiff marshaling evidence which demonstrates that trademark infringement has in fact taken place while the defendant, through his trademark lawyer, makes the case that trademark infringement has not taken place. In order to determine whether or not trademark infringement has occurred, the courts will typically use what is known as the Polaroid Factor Test. The Polaroid factor test consists of eight separate metrics.


  1. The strength of the mark.
  2. The degree of similarity between the two marks.
  3. The proximity of the products/services.
  4. The likelihood that the prior owner will bridge the gap.
  5. Actual confusion.
  6. The defendant’s good faith in adopting its own mark.
  7. The quality of the defendant’s product.
  8. The sophistication of the buyers



If we consider these factors in their totality, the test represents the meta-goal of ensuring a buyer will not experience confusion as to the source of the product bearing the mark.


Understanding the Trademark Litigation Process: Defense Against Trademark Infringement


Defendants can raise a number of defenses that may effectively block claims of trademark infringement.


The Trademark Doctrine of Fair Use allows for the incidental use of trademarks in various instances such as commentary, advertising comparisons, and parody.  The idea here is that while there may ostensibly be trademark infringement at play, the “infringing” trademark is ultimately permissible because it is not being used in such a way as to truly cause consumer confusion.


The legal doctrine of Laches asserts that plaintiffs that waited too long to bring a claim of trademark infringement should no longer be allowed to bring the claim because the defendant has relied on what seems to be the now plaintiff’s tacit approval of the defendant’s trademark use.   Laches is a powerful legal argument when wrought successfully and may very well bar some or all of the relief requested by the plaintiff. To establish laches, a defendant must prove that:

  • the plaintiff unreasonably delayed in enforcing its rights; and
  • the delay caused prejudice to the defendant.


Unclean Hands is somewhat of a more obscure legal doctrine with not fully delineated boundaries but the idea is that if a plaintiff engages in some sort of dishonest/nefarious/fraudulent behavior relating to a trademark infringement claim, a judge may dismiss the case, EVEN IF trademark infringement actually occurred.

Trademark Litigation and Equitable Relief


Typically, a plaintiff in a trademark litigation lawsuit has two fundamental goals; stop the trademark infringement through a court injunction (preventing the defendant from using the trademark any further) and obtaining monetary recompense to account for damages. In the event that the damages are particularly current and pressing, the plaintiff may, the plaintiff may seek a preliminary injunction at the beginning of the process to abate further harm. In order to be granted a preliminary injunction, the plaintiff must show:

  • The Plaintiff is likely to succeed on the merits of the case
  • The Plaintiff is likely to suffer irreparable harm if preliminary relief is not granted
  • The balance of harms is in the plaintiff’s favor, and
  • An injunction is indeed in the public’s interest.

If an injunction is granted, the defendant may be forced to cease its activities until a final decision is reached.



Along with an injunction, a plaintiff may also seek a monetary award.  Monetary awards in a lawsuit may include:

  • Damages for harm sustained as a result of the defendant’s infringing activity
  • Any profit the defendant’s received from using the trademark in question
  • Plaintiff’s costs sustained through “corrective advertising”
  • Reasonable royalties the defendant would have paid, had the trademark been licensed
  • Costs of the trademark action, and
  • Attorney’s fees in certain cases.

Trademark Litigation and Infringement Cases can be complicated. Contact a Top Trademark Lawyer to discuss your case.

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