//Considerations for Trademark Litigation

Considerations for Trademark Litigation

The reason that companies register a trademark is to protect their name, logo, or another commercially significant identifier of their product or service. In most cases, if a trademark owner becomes aware that their trademark rights are being infringed upon by unauthorized use of their mark, or the use of a confusingly similar mark, they will often be able to resolve the dispute through a cease and desist letter. However, in other cases, when another party continues the unauthorized use, the trademark owner may need to file a claim in court against the other party for trademark infringement.

Valid Mark

First, you must prove that you have a valid trademark that is being used in connection with your good or service. To register a trademark or claim common law rights to a mark, you must use the mark in commerce. There are additional requirements to a valid trademark including that the mark not be merely descriptive of the services or goods, primarily geographically descriptive, or generic.

In a pending 2020 case, USPTO v. Booking.com, the court is examining the issue of whether a generic word can be combined with a generic domain and create a protectable trademark. The Fourth Circuit affirmed the decision of a federal judge to overturn a decision from the Trademark Trial and Appeal Board, which initially refused registration of the mark as generic. The case is currently pending before the Supreme Court.


Along with having a valid trademark, you must also have superior rights to a mark in order to file a lawsuit to stop the other trademark owner from using that mark for their good or service. In the U.S., trademark rights are conferred by first use in commerce.

While it may be possible to file a trademark infringement claim based on common law rights to the mark, having a federal certificate of trademark registration is a significant advantage as it enables a mark holder to file their claim in federal court and establishes a legal presumption of ownership.

Likelihood of Confusion

The standard of trademark infringement is whether a likelihood of confusion exists between two marks. To answer this question, a court will consider several factors to determine if the two marks, along with the goods and services they are used in connection with, are similar enough that a consumer is likely to be confused as to the source of the mark.

The marks need not be identical and the goods or services each mark is used in connection with need not be the same for the likelihood of confusion to exist. Dealing with word marks, spelling variations, synonyms, and even phonetically similar words could present a likelihood of confusion. Similarly, if two types of services or goods are not identical, yet related, a court may find that there is a likelihood of confusion.

Remedies for Trademark Infringement

If your trademark was used by another company for their product or service, the following remedies may be available to you:

  • Court order requiring the defendant to stop using the trademark
  • Court order requiring the forfeiture or destruction of the infringing articles
  • Monetary relief (including possible costs of the lawsuit, profits made by the defendant due to their use of the trademark, and/or any damages suffered by the original trademark holder)
  • Court order requiring the defendant to pay attorney’s fees

Contact an Experienced Trademark Attorney

Contact the experienced trademark attorneys at The Myers Law Group at 888-676-7211 or online today. We can help you determine your next steps if you believe your trademark rights have been infringed upon.

2020-04-22T08:41:30+00:00February 22nd, 2020|