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Intellectual Property

Trademark Action

Someone is using a name too close to yours, or someone says your name is too close to theirs. Before deciding on a trademark action, it helps to know that several forums handle these disputes and each one can order different things.

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01 GUIDE

Trademark Action: what usually happens

Courts and the Trademark Board

A lawsuit for trademark infringement, usually brought under the federal Lanham Act, can lead to an injunction, money relief, and orders about the infringing goods. Federal and state courts can both hear many trademark claims. The Trademark Trial and Appeal Board at the USPTO is a different kind of body: it decides oppositions to pending applications and petitions to cancel registrations, and it can refuse or cancel a registration, but it does not award damages or stop anyone from using a mark. Some owners begin at the Board because it is usually less costly, then reconsider if the other side's use continues. Board decisions can be reviewed by the Federal Circuit or, through a new civil action, by a district court.

Domains, marketplaces, and the border

When the problem is a domain name registered in bad faith, an administrative proceeding under the Uniform Domain-Name Dispute-Resolution Policy can lead to transfer or cancellation of the domain without a lawsuit, though no money is awarded. Large online marketplaces run their own complaint systems for listings that misuse a registered mark, which can remove listings quickly but can also be misused against legitimate sellers. Recording a registered mark with U.S. Customs and Border Protection allows the agency to watch for counterfeit imports. Each of these tools has its own rules and evidence expectations.

Matching the forum to the goal

The right forum depends on what you need: stopping sales, removing a listing, preventing a registration, recovering money, or some combination. Bring your registration certificates or application numbers, evidence of when and where you began using the mark, examples of the other party's use, and any communications between you. If you are the one accused, bring the notice you received and your own clearance or filing records. A first conversation usually narrows the options to one or two realistic paths and identifies any deadlines already running, such as an opposition period or a response date. If you also sell abroad, rights and forums in each country are separate, since a US registration does not reach foreign markets.

02 ATTORNEYS

Who you would be working with

Attorneys at our New York and Washington, D.C. offices handle matters like this one.

05 HOW WE WORK

Client-centered service across jurisdictions

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Multidisciplinary & Efficient Solutions

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06 OFFICES

Where we meet clients

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Attorney Advertising. This page is general information about trademark action and is not legal advice. Reading it does not create an attorney-client relationship. Outcomes depend on the facts of each matter, and prior results do not guarantee a similar outcome. Laws differ by state and change over time.