1. Trademark Attorney NYC Manhattan Client Request for Assistance
The client, a small business owner managing a premium packaged food brand in Manhattan, retained a trademark attorney NYC immediately after receiving notice of a federal complaint.
A competitor alleged infringement under the Lanham Act, 15 U.S.C. § 1114 and § 1125(a), claiming that the client’s brand name was confusingly similar to its registered mark.
In addition to asserting that the conduct could constitute criminal counterfeiting under federal law, the complainant filed a motion for a preliminary injunction in federal court.
A trademark attorney NYC conducted an immediate review of the federal registration, commercial usage evidence, and the scope of the claimed rights.
Because criminal liability under 18 U.S.C. § 2320 requires intentional trafficking in goods or services while knowingly using a counterfeit mark, the trademark attorney NYC carefully analyzed whether the dispute involved true counterfeiting or merely a civil likelihood of confusion issue.
What Constitutes Trademark Infringement under Federal Law
Under the Lanham Act, trademark infringement occurs when use of a mark in commerce is likely to cause consumer confusion regarding the source, sponsorship, or affiliation of goods.
A trademark attorney NYC evaluates infringement claims using the Second Circuit’s Polaroid factors, which include the strength of the mark, similarity of the marks, proximity of the goods, evidence of actual confusion, and defendant’s intent.
Trademark infringement is not established merely because two marks share certain elements.
A trademark attorney NYC must determine whether the accused mark functions as a source identifier and whether ordinary consumers would likely be confused.
The legal analysis considers the overall commercial impression rather than isolated similarities.
• Existence of a valid and enforceable trademark
• Use in commerce by the accused party
• Likelihood of confusion under the Polaroid analysis
• Absence of defenses such as descriptive or nominative fair use
The trademark attorney NYC concluded that the complainant would have difficulty establishing likelihood of confusion under this standard.
Preliminary Injunction Standards in Federal Court
A preliminary injunction under Federal Rule of Civil Procedure 65 requires the movant to demonstrate likelihood of success on the merits, irreparable harm in the absence of relief, that the balance of equities favors the movant, and that the injunction serves the public interest.
A trademark attorney NYC understands that emergency relief is extraordinary and not granted automatically in trademark disputes.
The complainant argued that continued use of the client’s mark would cause reputational harm and market dilution.
However, the trademark attorney NYC challenged whether irreparable harm could be established, particularly given limited recent commercial activity associated with the complainant’s mark and the absence of documented consumer confusion.
2. Trademark Attorney NYC Manhattan Parallel Criminal and Civil Defense Strategy
Because the complainant referenced potential criminal counterfeiting under federal law, the trademark attorney NYC prepared a dual track defense addressing both civil litigation and possible criminal referral.
The defense strategy centered on demonstrating lack of counterfeit intent and absence of likelihood of confusion.
No Likelihood of Confusion under Polaroid Factors
The trademark attorney NYC conducted a comprehensive comparison of the marks:
• Visual Appearance: The client’s branding combined stylized typography with a botanical illustration, creating a distinct commercial impression compared to the complainant’s simpler word mark.
• Phonetic Differences: The pronunciation patterns differed in syllabic emphasis and rhythm, reducing auditory similarity.
• Conceptual Meaning: The client’s brand evoked a natural artisan identity, while the complainant’s mark conveyed a separate commercial concept.
Applying the Polaroid framework, the trademark attorney NYC argued that ordinary consumers were unlikely to believe the products originated from a common source. There was no evidence of actual confusion in overlapping sales channels.
Lack of Irreparable Harm and Counterfeit Intent
To justify injunctive relief, the complainant was required to demonstrate irreparable harm under the Second Circuit standard.
The trademark attorney NYC presented evidence that the complainant had minimal current market presence and had not actively expanded its brand in the relevant segment.
Additionally, criminal counterfeiting under 18 U.S.C. § 2320 requires intentional trafficking while knowingly using a counterfeit mark that is substantially indistinguishable from a registered mark.
The trademark attorney NYC demonstrated that the client’s branding was not substantially indistinguishable and that there was no evidence of intent to traffic in counterfeit goods.
Without such proof, criminal prosecution was not warranted.
3. Trademark Attorney NYC Manhattan Successful Outcome: No Charges and Injunction Denied
After reviewing the submissions and hearing argument, the federal court denied the motion for preliminary injunction.
The court found that under the Second Circuit standard, the complainant failed to establish a likelihood of success on the merits or irreparable harm.
The balance of equities also favored the client, whose business operations and export contracts would have suffered substantial disruption.
At the same time, no criminal charges were filed.
Authorities did not pursue counterfeiting allegations because the evidence did not support intentional trafficking in goods bearing a counterfeit mark.
The trademark attorney NYC successfully clarified that the dispute involved arguable similarity, not counterfeit duplication.
Importance of Coordinated Trademark Litigation Defense
Trademark disputes in Manhattan often involve aggressive civil tactics combined with threats of criminal referral.
A trademark attorney NYC must carefully distinguish between counterfeit cases and standard likelihood of confusion disputes under the Lanham Act.
This case highlights the importance of:
• Early Polaroid factor analysis
• Strategic opposition to preliminary injunction motions
• Clear separation of civil infringement and criminal counterfeiting standards
• Immediate action to protect commercial continuity
By engaging a trademark attorney NYC promptly, the client preserved brand identity, avoided emergency shutdown of operations, and maintained business credibility in domestic and international markets.
Trademark litigation in New York requires sophisticated understanding of federal trademark law and Second Circuit standards.
Businesses facing infringement claims should consult a trademark attorney NYC immediately to evaluate exposure and develop a strategic response.
Early legal intervention can prevent injunctive relief and eliminate criminal risk before escalation.
18 Feb, 2026
