When another business uses a trademark similar to yours in ways that confuse consumers, you may have grounds for a trademark infringement claim. Successfully pursuing such claims requires understanding what you must prove and how courts analyze the likelihood of confusion. A well-prepared infringement case protects your brand investment and prevents competitors from free-riding on your reputation and goodwill.
Elements of Trademark Infringement
To succeed on a trademark infringement claim, you must establish that you own a valid trademark and that the defendant's use of a similar mark is likely to cause confusion among consumers. The first element requires showing that your mark is distinctive and that you have priority of use over the defendant. The second element, likelihood of confusion, is typically the central issue in infringement cases and involves analysis of multiple factors.
Federal registration of your trademark provides significant advantages in proving the first element. Registration creates a legal presumption of validity and ownership, shifting the burden to the defendant to prove otherwise. Even without registration, you may have common law trademark rights based on actual use, though the geographic scope of such rights is typically limited to areas where you have established goodwill.
The Likelihood of Confusion Analysis
Courts evaluate likelihood of confusion using a multi-factor test that varies slightly among federal circuits but generally includes similar considerations. The strength of your mark is often the starting point, as stronger marks receive broader protection. Fanciful and arbitrary marks are inherently strong, while descriptive marks are weak unless they have acquired distinctiveness through extensive use and recognition.
The similarity of the marks themselves is a critical factor. Courts compare the marks in their entireties, considering appearance, sound, meaning, and overall commercial impression. Marks do not need to be identical for confusion to exist; substantial similarity can be enough. The comparison considers how the marks would be encountered by consumers in actual marketplace conditions, not in side-by-side examination.
Additional Confusion Factors
The similarity of the goods or services offered under the competing marks affects confusion likelihood. When both parties sell identical or closely related products, confusion is more probable than when the products serve different markets. The channels of trade and target consumers also matter; overlapping distribution channels and customer bases increase confusion risk.
Evidence of actual confusion, while not required, powerfully supports infringement claims. Customer complaints, misdirected communications, and survey evidence can demonstrate that confusion is not merely theoretical. The defendant's intent is also relevant; evidence that the defendant deliberately copied your mark suggests that confusion was both intended and likely achieved.
Gathering Evidence for Your Claim
Building a strong infringement case requires comprehensive evidence gathering. Document the defendant's infringing use through screenshots, photographs, and preserved copies of marketing materials. Note where and how the defendant uses the mark, including websites, advertisements, product packaging, and social media.
Compile evidence of your own trademark use and reputation, including advertising expenditures, sales figures, media coverage, and customer recognition. If you have experienced actual confusion, document it through customer communications, misdirected inquiries, or complaints. Consider commissioning a consumer survey to provide objective evidence of confusion in the marketplace.
Remedies for Trademark Infringement
Successful infringement plaintiffs can obtain various remedies. Injunctive relief orders the defendant to stop using the infringing mark and is often the most important remedy because it protects your brand going forward. Courts may order recall and destruction of infringing products and materials.
Monetary remedies include the defendant's profits attributable to the infringement, your actual damages from lost sales or harm to your mark, and in some cases treble damages and attorney fees for willful infringement. The Lanham Act also allows courts to award statutory damages in certain circumstances. The specific remedies available depend on the facts of your case and the applicable law.
Timing and Defenses
Laches can bar infringement claims if you unreasonably delayed in bringing suit after learning of the infringement and the defendant was prejudiced by the delay. Acting promptly when you discover infringement preserves your remedies and prevents laches defenses. The statute of limitations for infringement claims varies but is typically three to four years in most jurisdictions.
Defendants may raise various defenses including fair use, where the mark is used descriptively or nominatively rather than as a trademark. First sale doctrine may permit resale of genuine goods bearing your mark. Prior use in a limited geographic area may protect localized businesses from nationwide registrations. Understanding potential defenses helps you assess the strength of your case.
Federal Court vs. TTAB Proceedings
Infringement claims generally must be brought in federal district court. However, if your dispute involves a pending trademark application or existing registration, you may also pursue relief through the Trademark Trial and Appeal Board. TTAB proceedings can cancel or refuse registrations but cannot award damages or injunctions against ongoing use.
The choice between forums depends on your goals and circumstances. TTAB proceedings are typically less expensive than federal litigation and may be sufficient if your primary concern is blocking the defendant's registration. Federal court is necessary if you seek damages or need an injunction to stop ongoing infringement regardless of registration status.
Working With Counsel
Trademark infringement litigation requires experienced intellectual property counsel. An attorney can evaluate the strength of your claim, develop litigation strategy, and present your case effectively. The complexity of confusion analysis and the procedural requirements of federal litigation make professional representation particularly valuable in these cases.
Early consultation helps you make informed decisions about whether to pursue litigation and how to structure your case. Many trademark disputes settle before trial, but settlements negotiated from a position of strength typically produce better outcomes. Understanding your legal position helps you evaluate settlement offers and make strategic decisions throughout the dispute.