Helped Clients Recover Over $25 Billion. Since 1979.
Helped Clients Recover Over $25 Billion. Since 1979.
A trademark infringement attorney stops another business from using a mark that is confusingly similar to yours. The primary remedy under the Lanham Act is an injunction, a court order requiring the other party to stop. Most matters resolve before court, through a cease-and-desist letter, a rebrand by the other party, or a coexistence agreement.
Tell us what you are seeing. We will tell you whether it is a trademark matter and what it would take to stop it.
Trademark infringement is the use of a mark that is likely to confuse buyers about who is behind a product or service. Registered marks are protected under 15 U.S.C. Section 1114. Unregistered marks and trade dress are protected under Section 1125(a).
The answer to what is trademark infringement turns on confusion, not copying. The other mark need not be identical. If an ordinary buyer could think the two businesses are connected, the use is a trademark violation the law will address.
The most common trademark infringement examples fall into five patterns.
Each has a different fastest route. A marketplace counterfeit can often be cleared through a platform takedown. A competing registration usually needs the TTAB or federal court.
A copied product design, photograph, or piece of writing is usually a copyright question, not a trademark one. A similar product on its own is not a trademark violation, even if it is close to yours.
Trademark protects the identifiers that tell buyers who made something: the name, the logo, the slogan, the packaging. It does not protect the thing itself. The exception is trade dress, where a design has itself come to identify your brand. If you are unsure which protection your asset needs, see trademark vs copyright vs patent.
Courts in California and across the Ninth Circuit decide trademark infringement using the eight factors from AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). The test governs claims under 15 U.S.C. Sections 1114(1) and 1125(a).
No single factor decides a case. The Ninth Circuit has held they are neither exhaustive nor dispositive, and that courts weigh the totality of the facts. Assessing them against your facts is the first thing we do.
Save the evidence now. Evidence of actual confusion is persuasive and perishable. Save misdirected emails, support tickets, and mistaken invoices before they are deleted. Your trademark litigation attorney will build the case around them.
Enforcement runs in four stages, and the goal at every stage is the same. The other party stops using the mark. Most matters end at stage two. Your trademark infringement lawyer scopes and prices each stage before you commit to it.
Your trademark infringement lawyer confirms priority of rights, documents the use with dated captures, and tests the evidence against the Sleekcraft factors before anything is sent.
A trademark cease and desist letter states your rights, what must change, and by when. Resolution here takes one of three shapes. The other party rebrands, both sides sign a coexistence agreement defining who uses what and where, or you license the use on terms you control. A careless trademark infringement letter can invite a declaratory judgment suit in a forum you did not choose.
We oppose pending applications and petition to cancel existing registrations. The TTAB decides registration rights only, so it is the right venue when the registration itself is the problem.
A trademark infringement lawsuit is where injunctions under 15 U.S.C. Section 1116 become available. Under the Trademark Modernization Act of 2020, an owner who shows infringement is entitled to a rebuttable presumption of irreparable harm, which is a large part of why stopping the use is realistic. Your trademark litigation attorney files in California and in federal courts nationwide.
Trademark infringement damages are available in principle under 15 U.S.C. Section 1117, but most trademark matters end with the other party stopping rather than paying. Monetary recovery is uncommon, and a court awards it only where diverted sales or other real harm can be proven.
What federal law makes available, and what each remedy depends on.
| Remedy | What it means in practice | What it depends on |
|---|---|---|
| Injunction (15 U.S.C. Section 1116) | A court order requiring the other party to stop using the mark. This is what trademark enforcement is for. | Showing infringement, or likelihood of success on a preliminary motion |
| Rebrand or coexistence agreement | The other party changes their name or logo, or both sides agree on who uses what, and where. | Negotiation between the parties, usually before any filing |
| Destruction of infringing goods (15 U.S.C. Section 1118) | Court-ordered destruction of counterfeit or infringing inventory and the materials used to make it. | A violation already established, and the court's discretion |
| Monetary recovery (15 U.S.C. Section 1117) | The other party's profits, or your proven losses. Enhanced damages and fees in exceptional cases. | Proof of diverted sales or other real harm |
The pattern is consistent. Trademark infringement damages are the exception and the injunction is the rule.
This page is information, not legal advice, and reading it does not create an attorney-client relationship. Past results do not guarantee future outcomes, and no particular outcome is promised in any matter.
The Lanham Act contains no federal statute of limitations for trademark infringement. Courts apply the equitable doctrine of laches instead, borrowing an analogous state limitations period as a guide to whether a delay was unreasonable.
Delay weakens a claim, and it weakens a request for an injunction most of all, because a court asked to stop a use urgently will ask why you did not act sooner. Acting promptly protects your position.
Enforcement here is handled by the same practice that files the marks. David Lizerbram leads trademark and intellectual property work at The Schenk Law Firm.
We will tell you in the first conversation whether your matter is a trademark claim, and if it is not, where it belongs.
The practice sits within Business Advisory & Transactions, so licensing and contracts stay with a practice that already knows your business. Our Trademark Attorney page covers registration, and where the copying crosses borders we file through Madrid Protocol trademark filings.
Tell us what you are seeing and we will tell you whether it is a trademark violation, what it would take to stop it, and what each stage would cost. Schedule a consultation or call (858) 424-4444.
800+ USPTO Applications | Federal Court & TTAB Experience | San Diego Based, Nationwide Practice
The questions brand owners ask us most often in a first call.
Document the use before you contact anyone. Take dated screenshots and save customer messages showing confusion. An informal warning you send yourself can trigger a declaratory judgment suit in a forum you did not choose, so speak to a trademark infringement lawyer first.
Usually not. A copied design or product is typically a copyright or design patent question. Trademark infringement requires use of your name, logo, slogan, or packaging in a way that confuses buyers about the source. Trade dress may apply where the design itself identifies your brand, but that is the exception. See trademark vs copyright vs patent.
Yes. 15 U.S.C. Section 1125(a) protects unregistered marks, though your rights are limited to the goods and areas where you have used the mark. A trademark infringement attorney can often file the registration and the enforcement action in parallel.
Most do not. The usual outcome is that the other party stops. Trademark infringement damages under 15 U.S.C. Section 1117 require proof of diverted sales or other real harm. If you are weighing a trademark lawsuit mainly as a way to recover money, that expectation is worth resetting early.
How to prove trademark infringement comes down to two elements. A valid mark with priority, then likelihood of confusion under the eight Sleekcraft factors. Real customer confusion is the most persuasive proof available.
Cost tracks the stage. A trademark cease and desist letter sits at the low end, TTAB proceedings in the middle, and contested federal court work with a trademark litigation attorney at the high end. We price each stage before starting it. The first conversation costs nothing.
An office action is the USPTO's response during your own application. Infringement is a dispute in the marketplace with another business. We handle Trademark Office Actions separately.
Most matters resolve without a filing, through a letter, a takedown, or a coexistence agreement. Litigation becomes the right call when the other side ignores the letter or the harm is accelerating. Your trademark infringement lawyer recommends the least costly route that stops the use.
Attorney Advertising. The information on this page is for general informational purposes only and is not legal advice. Contacting The Schenk Law Firm or reading this page does not create an attorney-client relationship. Past results do not guarantee future outcomes.