Trademark Litigation 101

Our attorneys litigate trademark infringement and related issues in both state and federal court. As our list of Representative Trademark Cases shows, we have prosecuted and defended cases involving likelihood of confusion between the litigants’ trademarks in the fields of investment services, entertainment services, health care services, health insurance services, consumer appliances, computer software, computer hardware, jewelry, sporting goods, and restaurant services, to name a few. In addition to trademark infringement claims, we have litigated related claims in the areas of trademark dilution, unfair competition, unfair trade practices, breach of contract, breach of fiduciary duty, and theft of trade secrets. Our attorneys are tireless advocates, and strive to present our clients’ positions in the best and most effective manner to the trier of fact. Most importantly, we believe that litigation should serve our clients’ business needs. Thus, we endeavor to involve the client in every step of the litigation process and seek resolutions that will enhance our clients’ competitive positions in the marketplace.

If a trademark owner believes that another party is infringing one of its trademarks, it can sue for trademark infringement regardless of whether or not it has applied for or received a federal registration for the mark. Alternatively, the trademark owner may be sued for infringing another’s mark. Under appropriate circumstances it may make sense to send a “cease and desist” letter and to engage in negotiations to settle the dispute by agreement, license or otherwise before incurring the substantial expense usually involved in litigation. Since a wide variety of settlement options are usually available, it will often be possible to reach an agreement on terms that are mutually acceptable without having to initiate proceedings in court.

Trademark infringement suits are typically filed in federal court, but jurisdiction lies in state court as well. The litigation process can be summarized as follows:

  • Plaintiff files complaint alleging trademark infringement and possibly related claims of unfair competition
  • Plaintiff may also file a motion for a preliminary injunction to immediately enjoin the defendant from further infringing the plaintiff’s mark and seek an expedited hearing at which the judge may grant the motion, deny the motion, grant the plaintiff expedited discovery or order that the hearing be consolidated with an expedited trial
  • Defendant has 20 days to file an answer to the complaint (time may differ in state courts)
  • Case enters discovery phase
    • Each side serves requests for the production of documents
    • Each side serves written interrogatories
    • Each side takes depositions
  • Either side may move for summary judgment if no material facts are in dispute and the party believes it is entitled to judgment as a matter of law; if the judge grants summary judgment to either side, it often disposes of the entire case and no trial will be necessary
  • Case goes to trial

It is not possible to state with accuracy the expense involved in pursuing a trademark infringement action in federal court, as costs vary widely depending upon the complexity of the factual and legal issues, the vigor with which the case is contested, the amenability of the case to disposition by summary judgment and the willingness of the parties to settle the matter prior to trial. It is important to keep in mind, however, that most cases are resolved prior to trial and that not all of the above steps are always necessary.

If you would like further information concerning trademark infringement litigation, or have any questions concerning the above materials, please contact an attorney in our Trademark Practice Group.