Trademark Infringement and Remedies

1. Trademark Infringement Claims

Trademark infringement is the unauthorized use of a trademark on or in connection with goods and services in a way that is likely to cause confusion, mistake, or deception about the source of the goods or services. If a trademark owner believes a third party is infringing upon its mark, the trademark owner can file a civil lawsuit in either state or federal court.

In order to establish an infringement claim in court, a plaintiff must prove that (a) it owns a valid mark, (b) its mark is "senior" to the defendant's and therefore has priority, and (c) it has an infringement claim. Possible claims include that the defendant's mark is likely to confuse consumers regarding the source or sponsorship of the goods or services offered under the parties' marks or dilution of plaintiff's famous trademark by either "blurring" the plaintiff's mark's distinctiveness or "tarnishing" the mark's image.

One of the advantages of owning a federal trademark registration on the Principal Register is that there is a legal presumption that the trademark holder owns the mark and has the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. However, a defendant may rebut these presumptions during the court proceedings.

2. Remedies

If a trademark owner can prove infringement, there are several available remedies, which vary depending on the extent of infringement . These include the following:

  • Monetary relief, including defendant's profits, damages sustained by the plaintiff, and court costs;
  • A court order requiring that the defendant cease use of the mark;
  • An order requiring the destruction or forfeiture of infringing articles containing the mark; and
  • An order that the defendant pay plaintiffs' attorney's fees.

If you are facing a trademark infringement lawsuit or believe someone is infringing on your trademark rights and need assistance, call the Law Offices of Roland Tong, at 949-298-7840 or email Mr. Tong at [email protected] Mr. Tong has been obtaining trademark registrations for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies.