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Trademark Litigation: Defending Against Infringement Claims

Trademark Litigation: Defending Against Infringement Claims
Hendershot, Cannon & Hisey, P.C.

Trademarks are recognizable designs, words, or combinations that identify a unique brand, product, or service. When holders of a registered trademark allege infringement, they pursue civil lawsuits in federal court, rather than with the U.S. Patent and Trademark Office. In trademark infringement cases, plaintiffs have a wider set of remedies available to them, including injunctive relief and monetary damages.

At Hendershot, Cannon & Hisey, we have extensive experience handling trademark litigation, including representing plaintiffs seeking injunctive relief and damages, and defendants who face trademark infringement claims. When it comes to defending against these claims, we leverage our insight to help clients understand the potential liability they face and the specific defense strategies that can be raised on their behalf.

Liability & Potential Damages

In order to prevail on an infringement claim under the Lanham Act, the plaintiff must show your use of the trademark, its use in commerce, the likelihood of confusion in the marketplace, and account for damages caused as a result of the alleged infringement.

If you have been sued for trademark infringement, the following possible consequences apply:

  • Injunctive relief, meaning a court order to stop or limit your use of the mark (this can be ordered prior to final case resolution)
  • Monetary damages (with the possibility of treble damages in some circumstances)
  • A required accounting of profits and disgorgement of profits made by virtue of your infringing use of the mark
  • An order for you to pay the plaintiff's attorney fees (allowed only in exceptional cases)

Specific Defenses Against Trademark Infringement

The most common available defense is that your use of a trademark bears no risk of confusion in the marketplace. One example of this is where your company does business in one state and the plaintiff does business in another state. In this example, the risk of confusion is very low.

Another common defense is the "prior use" defense. This defense applies when you have been using the trademark in question before the claimant, at least in a particular territory. In this case, your unregistered prior usage of the trademark would give your business the right to use it, regardless of the trademark.

Other defenses include:

  • Laches – Involving the plaintiff's unreasonable delay in bringing suit.
  • Estoppel – Involving the plaintiff's tacit submission to your use of a mark, such as failing to file a timely objection with the USPTO.
  • Contestable registration – If a trademark has been in use for less than 5 years, its exclusive use can be contested in a trademark infringement case. If you're being accused of infringing on a relatively new trademark, this may be the most relevant defense in your case.
  • Unclean hand – Involving the plaintiff's purposeful conduct, such as creating and using a very similar trademark for the overt purpose of causing confusion in the marketplace.
  • Fair use – Involving marks that are not quite as distinctive as others, in which other individuals or companies may generally use the word or symbol in other contexts that are not directly competitive (such as fair use of the image of an apple on grocery produce in spite of the existence of Apple Computer's brand logo). This is more common if a trademark still has contestable registration.

Exploring all available defense strategies, as well as the most appropriate avenue for escaping liability, demands the attention of experienced attorneys who work personally with clients. At Hendershot, Cannon & Hisey, P.C. our Houston business lawyers place an emphasis on meticulous and thorough investigation, as well as the resourceful casework needed to protect the rights and interests of our clients. With our assistance, individuals and businesses facing trademark infringement claims can work protect their ability to use identifying designs and language, and ultimately their bottom line.

If you wish to discuss a potential matter with a member of our legal team, contact us for an initial consultation.