Filing a Trademark Case to Prevent Confusion

Filing a Trademark Case

When a trademark owner believes their mark is being used by someone else to cause confusion, they may file a trademark case.  Infringement is the legal term used to describe the fact that a trademark has been used without permission of the trademark owner in a way to confuse customers.  A trademark lawsuit may be filed in either state or federal court depending on the situation.  In most cases, where a trademark owner has a federally registered mark, they file the trademark case in federal court.

Likelihood of Confusion

Likelihood of confusion is the central focus in a trademark case. Whether it is likely that a customer of the products or services is likely to be or is confused.  Is the use of the mark by the other party the cause of this confusion.

To prove likelihood of confusion, the party who has been harmed must show that a their customers are likely to be confused or has been confused.  In addition to the likelihood of confusion test, other grounds for bringing a lawsuit include reverse confusion, counterfeit goods, contributory infringement and dilution.

While there are many factors which should be considered prior to deciding to file a trademark lawsuit, the central question is can you prove confusion from the perspective of the average customer of your products or services.

If a infringement lawsuit is filed, the trademark owner may ask the court to provide relief in a number of different ways, this includes asking the court or the judge to order:

• A preliminary or permanent injunction to prevent further harm;
• Impounding and destruction of the infringing goods; and/or
• Monetary damages.

There are exceptions and defenses against a claim of infringement, including a fair use exception, parody, abandonment, that the mark is generic, fraud, antitrust violations, estoppel and failure to file the claim timely.

If you believe someone has violated your rights or if someone has challenged your trademark or service mark, you should contact one of our litigation attorneys to discuss option about filing a trademark case.