How do I defend myself from a trademark infringement lawsuit?

The best way to protect yourself from a trademark infringement lawsuit is to research the marketplace before you choose to use something as a trademark. A well thought out marketing strategy and a good trademark attorney can save you significant time and money. When trademarks look similar, or have the potential to confuse the public or consumers, a trademark infringement action can be brought against the infringing party. However, just because trademarks that appear to be similar does not mean they will be found to be infringing under the law. There are several defenses to trademark infringement actions.

If you are accused of trademark infringement, do not ignore the accusations. It is likely that if someone accuses you trademark infringement they will first contact you through the mail or email. You should consult with an attorney that specializes in trademark law to help you review the allegations of trademark infringement against you and create a strategy to move forward. An experienced trademark attorney might be able to help you negotiate with the person accusing you of trademark infringement and come to a mutually agreeable understanding, without the need for litigation.

If the trademark owner will not negotiate with you, a trademark attorney will be able to best advise you on the defenses you have to an accusation of trademark infringement.

Some defenses to trademark infringement are:

Senior User – Whether a trademark is registered or unregistered, the person who was using the trademark first is allowed to use the trademark without infringing on other user’s trademark rights. Proof of a senior use is a good defense against otherwise incontestable trademarks.

Laches – this is an equitable remedy that puts a time limit on how long a person can be sued for trademark infringement. To establish laches, a defendant must prove that the plaintiff unreasonably delayed in enforcing its rights; and the delay caused prejudice to the defendant. The idea behind laches in trademark law is that a trademark costs time and money to develop. If a plaintiff learns of a defendant’s use of a trademark and then waits for a defendant to invest a significant amount of time and money into the use of the trademark, that is unfair to the defendant. Trademark holders must diligently police the use of their trademarks.

No Confusion – trademark law is intended to protection consumers from being confused about the source of goods and services. If consumers are not confused about the source of goods or services than the plaintiff’s trademark is not being infringed. Things to consider when claiming that there is no consumer confusion between to trademarks are – 1) the locations where the two trademarks are being used 2) the categories of goods in which the two trademarks operate and 3) the similarities or dissimilarities between the two trademarks.

Descriptive fair use – permits use of another person’s trademark to describe your products or services, rather than as a trademark to indicate the source of the products or services. This usually is appropriate where the trademark concerned has a descriptive meaning in addition to its secondary meaning as a trademark.

Nominative fair use – permits use of another person’s trademark to refer to the trademark owner’s actual goods and services associated with the mark. Nominative fair use generally is allowed as long as (a) the product or service in question is not readily identifiable without use of the trademark, (b) only so much of the mark as is reasonably necessary to identify the product or service is used and (c) use of the mark does not suggest sponsorship or endorsement by the trademark owner. Nominative fair use generally applies to comparative advertising, parody and noncommercial use of trademarks in academic articles, media reports, etc. For example, one could refer to “the professional basketball team from New York,” but it is simpler to say the New York Knicks. Here, the trademark is used only to describe the thing rather than to identify its source, and does not imply sponsorship or endorsement.

Abandonment – if the trademark holder has abandoned their mark they cannot later claim infringement on that mark.

Functional – trademarks do not protect functional objects so if an aspect of the trademark is essential to the use or purpose of the product; or the trademark effects the cost or quality of the product; or granting of an exclusive right puts competitors at a disadvantage unrelated to the trademark’s reputation in the marketplace.

There are many other possible defenses to an accusation of trademark infringement, it is best to consult with an attorney well versed in trademark law if you have questions.