Trademark Infringement Lawsuit: Your Legal Options

Establishing a successful trademark infringement lawsuit requires proving several essential elements. First, the plaintiff must demonstrate ownership of a valid trademark, which can be either federally registered through the United States Patent and Trademark Office or established through common law use in commerce. Second, the defendant must have used a substantially similar mark in connection with the sale or advertising of goods or services. Third, the use must be likely to cause confusion, mistake, or deception among consumers regarding the source or sponsorship of the defendant's goods or services. Courts also consider whether the defendant intentionally copied the mark or adopted it with knowledge of the plaintiff's rights. These elements work together to establish the foundation of a trademark infringement lawsuit in New York courts.

The likelihood of confusion standard is the cornerstone of trademark infringement analysis. Courts examine eight factors: the strength of the plaintiff's mark, similarity of the marks, similarity of the goods or services, evidence of actual confusion, marketing channels and methods of sale, types of consumers targeted, and the defendant's intent to adopt a confusingly similar mark. Additionally, courts consider the degree of care exercised by consumers in selecting the products or services. A trademark infringement lawsuit may succeed even if the marks are not identical, provided that the similarity and other circumstances create a substantial likelihood that consumers would be confused about the source or sponsorship. This flexible approach allows courts to address various infringement scenarios while protecting legitimate trademark rights

Courts typically grant preliminary and permanent injunctions to prevent ongoing infringement and protect the plaintiff's trademark rights. An injunction may require the defendant to cease using the infringing mark, recall products bearing the mark, and modify advertising materials. Beyond injunctive relief, a trademark infringement lawsuit may result in an award of the defendant's profits attributable to the infringing use or the plaintiff's actual damages, whichever is greater. Under 15 U.S.C. § 1117, courts may award treble damages and attorney's fees in cases of willful infringement, providing additional deterrence against intentional violations. The plaintiff must prove the amount of damages through evidence such as lost sales, price erosion, or harm to brand reputation.

The plaintiff initiates a trademark infringement lawsuit by filing a complaint in the appropriate federal district court that alleges the defendant's use creates a likelihood of confusion and requests appropriate remedies. The complaint must identify the plaintiff's trademark, describe the defendant's infringing use, and explain how consumers are likely to be confused. Following the filing, the parties engage in discovery, exchanging documents, interrogatories, and depositions to develop evidence supporting their respective positions. This phase may reveal evidence of actual consumer confusion, the defendant's intent, and the extent of the defendant's profits or the plaintiff's damages. Discovery disputes often arise regarding the scope of requests and privilege assertions, requiring court intervention to resolve disagreements.

If a trademark infringement lawsuit proceeds to trial, the plaintiff bears the burden of proving infringement by a preponderance of the evidence. Effective litigation strategy involves presenting clear evidence of trademark ownership, demonstrating the similarity between the marks, and establishing that consumers are likely to be confused. Expert testimony regarding consumer perception and market conditions may strengthen the plaintiff's position. Defendants may assert various defenses, such as claiming that their mark is sufficiently different to avoid confusion, that they adopted their mark in good faith without knowledge of the plaintiff's rights, or that the plaintiff's mark lacks sufficient strength for protection. Strategic settlements often occur during litigation when parties recognize the risks and costs associated with proceeding to trial.

Trademark owners can implement several preventive measures to reduce the likelihood of infringement and strengthen their legal position if enforcement becomes necessary. Conducting comprehensive trademark searches before adopting new marks helps avoid unintentional conflicts with existing rights. Monitoring competitors and marketplace activity enables prompt identification of potential infringement. Registering trademarks in relevant jurisdictions, including New York and other key markets, provides statutory protection and creates a foundation for pursuing a trademark infringement lawsuit if necessary. Sending cease and desist letters to suspected infringers often resolves disputes without litigation, though some infringers may require court intervention to stop their unauthorized use.