Trademark Litigation: What You Need to Know


A trademark is a highly valuable form of intellectual property that distinguishes a company or individual’s product or service from its competitors. Infringement upon a trademark can jeopardize the revenue stream of the trademark holder. This article provides an overview of trademark litigation, including its significance, the claims involved, the potential consequences, and the associated costs.

Protecting Trademark Rights

Trademark holders employ cease-and-desist orders to safeguard their trademarks against infringement. If these orders are disregarded, trademark litigation becomes necessary. The rightful owner of the trademark files a civil lawsuit either in state or federal court. Since trademark infringement often occurs on a regional or national scale, federal court is usually the preferred venue.

Understanding Trademark Rights

Unlike patents, which have a limited lifespan, trademark rights can be perpetual. However, trademark owners must renew their trademarks every ten years and demonstrate ongoing commercial use to qualify for renewal. Failure to renew the trademark or a lack of general use may result in the cancellation of the trademark by the United States Patent and Trademark Office (USPTO). In such cases, the owner can reapply for trademark registration, but they must provide detailed information regarding past and future use of the trademark.

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The Main Claims in Trademark Infringement

In trademark litigation, a plaintiff typically asserts one or both of the following claims related to trademark infringement:

Likelihood of Confusion

Trademark holders argue that the similarity between their trademark and the defendant’s creates customer confusion regarding the source of the products or services. Factors such as the proximity of competing trademarks, the similarity between them, and consumer testimony can establish the likelihood of confusion.

Trademark Dilution

In cases of trademark dilution, the trademark holder claims that the infringing party’s trademark diminishes the original trademark’s distinctiveness and value. If the infringer uses a similar trademark for controversial purposes, the plaintiff may argue that it tarnishes the original trademark’s reputation.

Consequences of Trademark Infringement

If a trademark owner successfully proves infringement in court, potential remedies include:

  • Injunctions to prevent the defendant from using the trademark in the future.
  • Orders to destroy or forfeit the defendant’s infringing products.
  • Monetary relief, including the defendant’s profits from the infringing products, to compensate for the plaintiff’s business losses.

The Cost of Trademark Litigation

Trademark infringement lawsuits that proceed to trial can range from $375,000 to $2 million per case.

The Trademark Litigation Process

Trademark litigation duration varies depending on jurisdiction, but it typically lasts at least one year, often longer. In urgent cases, a plaintiff can expedite the proceedings by presenting evidence that the trademark infringement poses a significant threat, such as an upcoming product release.

To support a trademark infringement claim in court, the plaintiff must prove ownership of the trademark and demonstrate priority, establishing that their trademark predates the defendant’s. Other parties, such as exclusive and non-exclusive licensees, may also sue an infringer if they can show a legitimate interest in the trademark.

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Strategies in Trademark Litigation

Defendants may challenge trademark claims by requesting the cancellation of the trademark registration with the USPTO’s Trademark Trial and Appeal Board. They may argue that the registration was invalid or that the defendant’s trademark predates it.

Additionally, defendants can deny the alleged infringement by asserting that their trademark sufficiently differs from the plaintiff’s or that the plaintiff’s trademark lacks distinctiveness.

Case Studies

Starbucks v. Obsidian Group (2016)

Starbucks filed a trademark infringement lawsuit against Obsidian Group, accusing them of diluting the distinctive quality of Starbucks’ “Frappuccino” trademark. The case revolves around the similarities between Starbucks’ trademark and Obsidian’s offering named “Freddoccino,” which led to confusion among consumers.

T-Mobile v. Aio Wireless (2014)

T-Mobile sued Aio Wireless for using a plum color in its marketing campaign, which T-Mobile claimed infringed upon its trademarked magenta. The court ruled in favor of T-Mobile, barring Aio from using the plum color in its advertisements and promotional materials.

Intellectual Property Overlaps

Trademarks are just one component of intellectual property (IP) rights. Other segments include patents, trade secrets, and copyrights. While patents protect inventions, trademarks safeguard a company’s name, design, or image. Trademark litigation can sometimes intersect with litigation involving other IP rights, such as patent infringement.

Handling Trademark Litigation Efficiently

Trademark litigation is crucial for protecting a company’s reputation and market position. Employing technology can streamline the process, offering benefits such as improved research, faster discovery, and enhanced argumentation. Services like Garrity Traina can provide comprehensive tools and expert guidance to navigate trademark litigation effectively.

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Remember, trademark litigation is highly complex and should always be handled by experienced professionals. For more information on trademark litigation, visit Garrity Traina today.