Trademark Infringement Litigation Attorney Guides Corporate Strategy

Federal and state trademark rules overlap. The complaint should state the right and basis for each remedy.

• Registered Marks: Lanham Act Section 32 covers qualifying infringement of federally registered marks.
• Unregistered Marks: Section 43(a) may protect some unregistered marks and source identifiers.
• State Law: General Business Law § 360-k applies to marks registered under Article 24, while § 360-l provides injunctive relief for qualifying dilution claims.

An injunction may matter more than money while disputed use still reaches customers. Under 15 U.S.C. § 1116(a), the statute provides a rebuttable presumption of irreparable harm at specified stages.

• Current Use: Identify the listings, ads, packaging, or sales that should stop.
• Proof: Test ownership, priority, protectability, and likely confusion before seeking relief.
• Scope: Tie the requested order to conduct the evidence supports.

Check the registration record against use in commerce. A brand protection and trademark law review can help organize that proof.

• Status: Confirm the owner, registration, goods or services, and status.
• Priority: Preserve dated sales, ads, websites, packaging, and distribution records.
• Common-Law Rights: Map where use and recognition support the claimed right.

Counterfeiting is not a stronger label for ordinary similarity. Special federal remedies apply only when the use meets the federal counterfeit rules.

• Mark: Confirm that the asserted mark fits the federal counterfeit definition.
• Evidence: Preserve products, listings, seller data, orders, and payment records.
• Remedies: Compare actual damages and profits with statutory damages under 15 U.S.C. § 1117(c) when available.

Under 15 U.S.C. § 1117(a), qualifying Lanham Act claims may support profits, damages, and costs, subject to the statute and equity. A focused discovery obligations plan can keep proof clear.

• Sales: Identify revenue tied to the challenged goods or services.
• Loss: Keep records that support lost sales or other recoverable harm.
• Costs: Preserve records needed to test claimed deductions from profits.

A fast settlement helps only if it solves the business problem. Future use, inventory, listings, releases, and payment terms can matter as much as money.

• Early Stage: Define the conduct that must change.
• Discovery Stage: Revalue the case as evidence develops.
• Trial Stage: Compare remaining risk with the value of unresolved relief.

Ownership and use records should withstand review. Related brand protection work can identify weak points before suit.

• Use: Confirm current use for the goods or services at issue.
• Validity: Assess plausible abandonment, genericness, priority, or cancellation arguments.
• Consistency: Compare the claim with records and prior public statements.

A company defendant does not answer whether an officer or principal may also face direct liability. Personal participation and veil piercing are different theories.

• Participation: Identify who directed or took part in the challenged acts.
• Structure: Keep direct conduct separate from any veil-piercing claim.
• Risk: Review indemnity and possible insurance without assuming coverage.

An opposition or cancellation may affect registration without ending the dispute. Keep positions consistent when a TTAB matter and court case concern the same mark.

• Opposition: Challenges a pending application.
• Cancellation: Challenges a registration on an available ground.
• Court: Can address infringement, injunctions, and money relief beyond TTAB authority.

Domestic trademark rights do not automatically extend abroad. If disputed branding crosses borders, review rights and remedies by country.

• Rights: Identify enforceable rights in each market.
• Actions: Coordinate domestic litigation with needed foreign filing or action.
• Other IP: If copying involves trade secrets, assess trade secret litigation as a separate claim.