Updated November 25, 2020:

Suing for trademark infringement is done when a registered trademark holder believes his or her trademark has been infringed upon by another party for financial gain. Protecting trademarks is important for businesses, not only for their bottom line but also to maintain their reputation.

Plaintiff Rights

A good offense is key to presenting the best defense in the case of trademarks. To avoid trademark infringement, it's important to reinforce your ownership of the mark proactively. An important step toward protecting a trademark is to register it at the United States Patent and Trademark Office. If you hold a trademark registration, it's assumed that you're entitled to exclusive, nationwide rights in regards to using the trademark in connection with listed services and/or goods.

Likelihood of confusion is the standard for establishing trademark infringement. This means the average consumer would believe that services or goods connected with a trademark (adopted after the first, actual trademark) have a connection with the trademark registrant, including being approved by the original party or having an association with them.

The registrant has the right to have any subsequent parties back away from the mark that's similar enough to cause confusion. The standard doesn't hold to an identical status, so if the different marks contain minor variances, that doesn't matter.

Even if a plaintiff hasn't registered his or her mark, he or she has common law rights due to sales and distribution. These rights aren't the same as the ones upheld under a federal registration, so they're limited to the geographic regions where the plaintiff distributes or sells the product, but those rights are still valid.

If you suspect trademark infringement, you'll have to know if you should sue for infringement or simply issue a trademark threat letter. If you decide to sue, you must get as much information about the potential defendant as you possibly can. Ask the following questions:

  • Are you able to easily identify the person or is it an anonymous entity who will be hard to identify?
  • Does the person live in the U.S. or do business here and is therefore subject to U.S. jurisdiction?
  • Is the potential defendant collectible?

Should you win the suit, you still have to be able to collect any monetary awards. For uncollectible defendants, you'll only have a hollow victory. The fees you spent on a trademark attorney's services will be wasted.

Alternatives to Infringement Lawsuits

You should also assess your goals properly. Are you willing to settle for anything less than monetary damages?

You might consider other solutions besides lawsuits for trademark infringements. Alternate remedies may be more cost-effective and easier to implement.

  • You might file an injunction that requires the infringing party to cease and desist the infringing activity.
  • You might also get a court order that requires the party to transfer the domain name rights to you so that you control it and can shut the website down if desired. A court order may be issued to a web hosting company for the same reason.
  • Other orders may result in the infringing party having to show up in court and explain why he or she is taking part in an activity that infringes on your trademark.

A preliminary or permanent injunction against a party that has infringed on your trademark may be all that's needed in a straightforward infringement case.

If you hold a trademark, you can also take legal action against someone for trademark dilution, which is when a well-known trademark has been used by an unauthorized party. As a result, the well-known mark's reputation has been tarnished by being associated with dissimilar products.

Rights for Defendants

Not every instance of conflicting trademark use counts as infringement. Someone can use descriptive language to accurately describe his or her services or goods, no matter the trademark rights of the plaintiff. This is considered fair use, which is recognized under the law.

Trademarks offer protection to the entities who register them, and no one wants their reputation or company name damaged with unauthorized use. Lawsuits aren't always necessary in cases of infringement either, and you may have other options besides going to court.

What Does a Trademark Do?

Trademarks are around you all day long, from Merry Maids to Pepsi to Coke. They define a specific service or good and help get rid of possible confusion with consumers when they see similar items. If you register your trademark with the United States Patent and Trademark Office, you can eliminate other companies or people in the United States from using the trademark to identify services or goods that are similar.

Can the Owner of a Registered Trademark Be Sued for Infringement?

Trademark law is taken from common law that was meant to stop companies from being competitors in the market by using unethical and unfair business practices. This law stops the use of a trademark that's unauthorized and may cause confusion within consumers when it comes to what is the real source of services and goods. Trademark law also stops competitors from diluting the goodwill and reputation that the service or product has gotten with consumers.

A company can sue another company for trademark infringement, no matter if they registered the trademark or not. They just need to show that there was an earlier date when the trademark was first used and that some type of damages has been suffered due to this infringement.

Steps to Create Trademark Rights

A company can get legal rights for a trademark by using it to identify the goods, brands, and services in a public marketplace. This is true even if they don't register the trademark. The biggest claim to legal rights in a certain trademark goes to the company that originally uses the trademark on their services or goods in commerce.

The trademark's first user is figured out by the proof of date when it was first used, the service or goods at issue, the mark's distinctiveness, whether it was formally registered, and where the geographical use is. A business that wants to start using a certain mark needs to perform a detailed search to see if the trademark they're proposing would infringe on others that are already being used.

First Use of a Trademark

A company can register its trademark in the state where the business is done with the state trademark registry or file it with the United States Patent and Trademark Office. Another option is a company can show its claim on the trademark just by using it in the marketplace. Companies are entitled to common law rights just by using the trademark publicly. Official registration of the trademark with a federal or state repository isn't required, but this does create a public record that documents the date of first use when the business used the trademark.

It also makes the public aware that they're claiming these rights to the trademark. Registration can't be used to disprove a first use claim that happened earlier by another company. If the trademark was officially registered, the company might still get sued for infringement if the competitor proves they had an earlier first use date. Courts allow the rights for the business to use their trademark if they successfully prove there was an earlier date of first use.

What Are the Requirements That a Mark Must Satisfy to Be Considered Valid?

Not any phrase, word, or symbol can be used for a trademark. Requirements are in place for a mark to meet for it to be a valid trademark. As part of registering the trademark, it should be very distinctive versus descriptive. The business should be the first to use it in commerce. A distinctive mark is unique in a certain way. This kind of mark tends to get the strongest legal protection due to its uniqueness.

A generic mark is one that is often used to distinguish a specific type of product or service. It may be confused easily with another mark that's similar due to its common trade use. Generic marks tend to cause confusion among consumers, as they don't know what the genuine source of the goods is. This kind of mark also gets the fewest legal protections.

You will also need to show that the mark was used previously in interstate commerce for it to qualify for the federal trademark registration. If not, you'll need to apply for a state trademark registration. This can limit the geographical range the trademark can be legally enforced.

If you need more information on suing for trademark infringement, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.