Trademark Infringement Defense

Trademark Infringement Defense

Trademark law provides a way for businesses to protect their brands. It prevents third parties from using or diluting a valid trademark without the owner’s permission. Trademark owners are responsible for enforcing their rights, and if they feel someone has infringed on their mark, they can file a lawsuit and potentially receive monetary damages and/or equitable relief. However, there are many defenses to a trademark infringement action. If you are sued for infringement, it is important to consult an experienced advocate to represent your interests and minimize the risk of liability.

When Is Use of a Trademark Unlawful?

A trademark is a word, phrase, symbol or design (or a combination of those things) that identifies and distinguishes the source of certain goods or services.  It allows consumers to know exactly where products are coming from.  Owners are not required by law to federally register them in order to enforce their rights, but registration offers many benefits when trying to stop infringers.

Under federal and/or state law, third parties can be held liable for using someone else’s mark or a similar mark that may cause consumer confusion or dilute the value of their brands.  Typically, plaintiffs will sue either for trademark infringement or trademark dilution.

Trademark Infringement

Trademark infringement is the unauthorized use of another party’s valid trademark.  To establish a claim, there must be proof that (1) the trademark owner owns a valid and protectable trademark, and (2) there is a likelihood of confusion from the alleged infringer’s use of the owner’s mark in commerce.  This can be difficult to prove as not all marks are trademarkable.  When ruling as to whether a party is liable for infringement, courts analyze eight factors to determine whether there is a reasonable likelihood that consumers would be confused by the defendant’s use of the mark under the circumstances.

Infringement claims are fact-sensitive and require good legal representation to ensure a defendant has presented all information in its favor to contest liability.

Trademark Dilution

Trademark dilution involves unauthorized use of a “famous” mark which “blurs” or “tarnishes” the mark and dilutes the value of the trademark. Blurring occurs when the distinctiveness of the brand is impaired by association with the other party’s use. Typically, the third party is using the mark for a different type of product or service. Tarnishment occurs when a mark similar to a famous mark harms the reputation of the famous trademark. This may be done when the similar mark is used to market an inferior product. In determining whether a mark is famous, courts look at multiple factors.

Contesting Registration of the Trademark

To avoid liability for infringement for using a mark, prior to being sued, a party can oppose another’s trademark registration. Generally, this occurs with newly registered trademarks. The opposing party can allege that the mark’s owner does not have the right to exclusive use of the mark yet. The United States Patent and Trademark Organization will then review the opposition and the filing party’s response to determine whether the mark at issue will be permitted to be federally registered.

What Are the Consequences of Infringement?

Generally, plaintiffs may sue in federal or state court to enforce their rights against infringers. In either case, a defendant may be ordered to compensate the plaintiff for any losses as well as pay over any profits the defendant made in connection with the infringement. In addition, a defendant who acted intentionally and in bad faith may be liable for treble damages. Attorneys’ fees may also be awarded to the plaintiff in exceptional cases.

Federal law also allows injunctive relief, which means the court can order the defendant to cease use of the mark and destroy or hand over any infringing material.

What Defenses Are Available in Trademark Infringement Claims?

There are various defenses to a claim of trademark infringement.  The first is that defendants can contest the validity of the trademark.  Only certain marks used in commerce are trademarkable.  In addition, defendants have several affirmative defenses against a lawsuit.  Generally, these are based on either excusing the defendant’s conduct because of the improper conduct of the plaintiff or that the defendant made a permitted use of the trademark so there is no infringement.


The use of a trademark in the context of an artistic or editorial parody is permitted under the law. However, the use may not be closely tied to commercial use and it clearly will not lead to confusion. A typical example of parody would be making fun of a product in the context of an entertainment program.

Fair Use

The Fair Use Doctrine allows a party to use another party’s trademark in two instances. Descriptive fair use permits use of the mark as a descriptive term, rather than for its association with a brand, goods or services. Nominative fair use applies when the mark is used to refer to the actual product identified by a mark (i.e., the trademark is used to refer to the plaintiff’s product, not the defendant’s). Fair use may also apply where the trademark is used in the context of commentary or criticism. In all of these cases, consumer confusion is unlikely so infringement cannot be established.

Other Defenses

Defendants can defend against a lawsuit by proving that the plaintiff engaged in certain types of wrongful conduct. These include the following:

  • The plaintiff unreasonably delayed in bringing a timely claim when it knew or should have known of the defendant’s infringement.
  • The plaintiff implicitly or explicitly permitted use of its mark by the defendant.
  • Unclean Hands. This applies when the plaintiff engaged in illegal or egregious conduct, such as making fraudulent statements regarding their trademark.


Defending against an infringement action is difficult and unpredictable.  Courts take into account many factors in determining whether a use is infringing, and the consequences of an unfavorable decision are high.  An experienced trademark attorney is essential to represent your interests and present a strong case to avoid liability.


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