What is Trademark Litigation?
Trademark litigation is a legal dispute surrounding the non-permitted use of someone’s trademark, such as their logo or brand name. During litigation, the rightful trademark owner will show proof that they own the trademark and, if successful, can receive damages for the infringement.
Read the rest of this article to explore how trademark litigation works and how a lawyer can help you with the process to improve your outcome.
What are Common Claims in Trademark Litigation?
A trademark owner can sue for primary or secondary infringement.
- Primary infringement. This is when the trademark owner claims that the other party is guilty of using the trademark without their consent. For example, they might be using it in commerce or have copied it.
- Secondary infringement. The trademark owner claims that the other party has caused another party to violate the trademark, or has contributed to the infringement in some way.
There are some common claims in trademark litigation. These include:
Likelihood of Confusion
A trademark owner can argue that the other person is using a similar trademark to theirs that can cause confusion in their consumers. To argue this effectively, the trademark owner might refer to factors such as the following:
- The trademarks are being used in the same location or are marketing the same goods/services.
- The trademarks are too similar in their design or name.
- They have a customer testimony that shows evidence of the confusion caused.
Trademark Dilution
A trademark owner might claim that the other party’s trademark is decreasing their original trademark. Another way of saying this is that the similar trademark is making their unique trademark less distinctive in the market. This reduces its value.
How Do You Prove Trademark Infringement?
During trademark litigation, it will help you to prove:
- You own the trademark. This is important because it means you’re the legal owner of the trademark and have a right to stop the other party from using it. Evidence includes showing that the trademark is listed on the USPTO (United States Patent and Trademark Office).
- You’ve owned it before the other party owned theirs. This can be used to prove that the other party has copied your trademark.
What is Involved in the Trademark Litigation Process?
There are some common steps involved in the trademark litigation process. These include:
- Contacting the other party. The trademark owner starts the process by sending the other party a cease-and-desist letter to tell them to stop their actions.
- Filing a complaint. If the other party doesn’t respond to the cease and desist by stopping their behavior, the trademark owner can file a formal complaint against them. This is done with the court.
- Discovery. During this phase, the parties and their lawyers exchange information, such as evidence to support their claims.
- Settlement. After the discovery phase, the parties might find a way to negotiate and reach an agreement.
- Trial. If settlement is unsuccessful, the parties will head to trial. They will present their evidence in front of a judge or jury.
- Judgment. The court will deliver a verdict on the case, such as ordering the other party to stop using the trademark or paying damages to the trademark owner.
What Remedies Can You Get for Trademark Infringement?
If you can prove that someone has violated your trademark in court, you could receive the following remedies:
- Injunction. This prevents the other party from being allowed to use the trademark, effectively putting a stop to their actions.
- Order. The other party might be instructed to destroy or give away any products that they’ve used in the trademark infringement.
- Monetary damages. This can include the other party paying back the money they earned from using the trademark to sell their goods/services.
How Can You Prevent Trademark Litigation?
Although you can’t always prevent someone from violating your trademark, there are some things you can do.
- Conduct trademark clearance searches. Before registering your trademark, you should conduct a deep trademark clearance search on databases such as USPTO. This will clarify that no one else is using a similar trademark.
- Register your trademark. Since showing proof of trademark ownership is vital during litigation, you must register your trademark in all applicable jurisdictions. If you need a nationwide trademark, file a federal trademark that protects you across the country.
- Maintain your trademark. To keep your trademark active, you have to show that you’re using it in commerce and renew it, usually around every 10 years.
- Take prompt action against infringements. This includes sending a cease-and- desist letter to the other party and contacting a trademark lawyer for assistance.
How a Lawyer Can Help You During Trademark Litigation?
Getting help from a qualified lawyer is essential if you’re dealing with trademark infringement or litigation. There are many ways in which a lawyer can help you, such as by:
- Saving you time. Trademark litigation can take months or years. Your lawyer can speed up the process by showing the judge that the situation requires expedition, such as if the infringement is hampering your business.
- Conducting trademark searches. A lawyer can help you conduct thorough trademark clearance searches to ensure there are no conflicting trademarks.
- Assessing trademark validity. They will check that your trademark is valid and legally enforceable to build your case.
- Investigating the claim of infringement. They’ll also collect evidence to show that the other person is violating your IP.
- Drafting and reviewing all legal documents. This ensures that they’re clear and legally sound to strengthen your case.
- Negotiating settlements. This helps you to resolve issues outside of court.
- Representing you in court. If your trademark dispute does go to court, your lawyer will present arguments and guide you through the process.
Where to Find a Lawyer for Trademark Litigation
Online legal platforms like ContractsCounsel make it easy to connect with qualified trademark lawyers. ContractsCounsel is one of the largest online legal marketplaces where clients can hire professional lawyers who have been vetted on the platform. Lawyers on the platform have experience in assisting clients with trademark litigation and will help you through every step of the trademark litigation process, giving you the confidence to strengthen and protect your brand.
