"I've Been Sued For Infringement.."

How Does a Trademark Infringement Lawsuit Begin?

When a trademark owner files a complaint with the court alleging infringement, a lawsuit is brought on. The basis of a lawsuit is started by addressing the names of the parties involved as well as the allegations in the case. Trademark owners that decide to sue might file their complaint in either state or federal court depending on the extremities.

Normally, after the complaint is filed, the trademark owner or their attorney will send you a letter regarding the claims in the case and to notify you that you have been served with a lawsuit. In some instances, they will make contact before a suit is filed, allowing the other party alternative routes to correct the infringing actions, such as ceasing the use of the mark. 

What Are My Options to Respond to a Trademark Suit?

If you have been sued, you are required to respond to the complaint by a certain time once you have been “served”. You have a couple options in regard to your response. You can file what is called an answer or you can file a motion based on one of the grounds set forth in Rule 12 of the Federal Rules of Civil Procedure if any apply. If you fail to reply in a timely manner, the court may enter a default judgment against you, and you will be forced to pay damages or perform other remedial actions.

If you have been sued for trademark infringement, a licensed attorney, experienced in trademark litigation, can best assist you in deciding the best course of action, which may include:

• Challenging the claimed trademark;
• Denying that the trademark owner has proved infringement;
• Asserting a defense to the alleged infringement; and/or
• Negotiating a settlement of the lawsuit by, for example, agreeing to take certain actions to avoid likelihood of confusion.

One thing to keep in mind though, is that litigation is costly and time-consuming. It may take years before a court makes any decisions. Also, even if a court reached a decision, it has the chance to be appealed to higher courts, resulting in further expenses and time. 

How Do I Know Whether I'm Infringing a Trademark?

For a trademark infringement claim to hold up in court, a plaintiff must prove that it owns the registered mark in question, along with its rights and that the defendant’s mark is likely to cause confusion within the mind of the consumers.

Generally, the court will consider evidence, addressing the various factors, when determining whether there is a likelihood of confusion among consumers. Some of the main things taken into consideration are the degree of similarity between the marks and whether the parties’ goods and/or services are sufficiently related. Another consideration is how and where each party advertises, markets, and sells.

These particular factors are what builds a case on infringement, following the amount of evidence that is brought forth. Additionally, a trademark owner may claim trademark “dilution,” asserting that it owns a rather famous mark, and the use of your mark diminishes the value of theirs through tarnishing the image. 

How Can I Use USPTO Records to Find More Information Regarding a Claimed Trademark?

The UPSTO has a Trademark Electronic Search System (TESS) that you can use to search for similar trademarks in their database. If you happen to know the application serial number or registration number, then you can use the Trademark Status and Document Retrieval (TSDR) system.

Are There Ways to Challenge a Trademark Registration or Application?

There are a few ways to challenge a mark, depending on certain circumstances:

• You can challenge a trademark registration issued by the USPTO by filing a petition to cancel the registration with the Trademark Trial & Appeal Board (TTAB).
• You can challenge an application for trademark registration at the USPTO by filing an opposition with the TTAB within 30 days after it’s published in the Official Gazette.
• You can file a declaratory judgment lawsuit, asking a court to declare that your mark does not infringe the trademark owner’s mark, and/or that the trademark owner’s mark is invalid.
• If you happen to already be a defendant in an infringement lawsuit, you may assert an “affirmative defense” and/or a counterclaim against the plaintiff challenging the validity of the plaintiff’s trademark.