When Cease-and-Desist Isn’t Enough: Trademark Enforcement Through Litigation
This post is the fifth installment in a six-part series on essential brand protection strategies.
In Parts 1 through 4 of this series, we covered the foundations of building a strong brand, including trademark clearance, trademark registration with the U.S. Patent and Trademark Office, trade name registration, and best practices for selecting a domain name and handling domain name infringement.
But what happens when infringement is discovered, a demand letter regarding trademark infringement is sent, and goes unanswered—or worse, when the infringer simply ignores it and keeps going?
Sometimes, protecting your brand requires taking the fight to court. This installment explains when litigation becomes necessary, what types of claims are available to trademark owners, and what the litigation process generally looks like, so you can make informed decisions about enforcing your rights.
When Litigation Becomes Necessary
Most trademark disputes never reach a courtroom. The majority are resolved through negotiation, licensing agreements, or the credible threat of litigation. However, there are situations where filing suit is the only practical path forward:
- The infringer ignores your cease-and-desist letter and continues the infringing activity.
- The infringer disputes your rights and refuses to negotiate in good faith.
- The infringement is causing immediate, significant harm to your business or brand reputation.
- A competitor is intentionally trading on your goodwill, and you need emergency injunctive relief to stop it quickly.
- The infringing party has filed a declaratory judgment action seeking a court ruling that their use does not infringe your mark, forcing you to litigate defensively.
- The scope of infringement is widespread, and the potential for ongoing consumer confusion is substantial.
The decision to litigate is never taken lightly. Trademark litigation can be expensive and time-consuming. But failing to enforce your trademark rights has its own serious consequences—including the potential loss of those rights altogether. Courts have found that trademark owners who fail to police their marks over time may be deemed to have “abandoned” them or may be equitably barred from asserting infringement claims through the doctrine of laches.
Where to File: Federal Court and the TTAB
Trademark owners generally have two primary litigation venues: federal district court and the Trademark Trial and Appeal Board (TTAB) at the USPTO.
Federal District Court. The Lanham Act, 15 U.S.C. § 1051 et seq., grants federal courts jurisdiction over trademark infringement, unfair competition, and related claims. Federal court is the appropriate venue when you are seeking monetary damages, injunctive relief, or both. Cases are heard by a judge (and sometimes a jury for damages issues) and follow the full rules of civil procedure, including discovery.
The Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative tribunal within the USPTO that handles oppositions to pending trademark applications and cancellation proceedings against registered marks. The TTAB cannot award monetary damages or injunctions—its authority is limited to determining whether a mark should be registered or whether an existing registration should be canceled. That said, TTAB proceedings are a powerful and often more cost-effective tool for challenging a competitor’s registration or defending your own.
In many cases, trademark owners pursue both tracks simultaneously—filing suit in federal court for damages and injunctive relief while also pursuing a TTAB cancellation of the infringer’s registration.
Types of Claims Available to Trademark Owners
Federal trademark law and state law provide trademark owners with a number of distinct legal theories, each with its own elements, remedies, and strategic considerations.
1. Trademark Infringement (Likelihood of Confusion)
The most common trademark claim is infringement under Section 32 of the Lanham Act (for registered marks) or Section 43(a) (for unregistered marks). The core legal standard is whether the defendant’s use of a mark is likely to cause consumer confusion as to the source, sponsorship, or affiliation of the goods or services.
Courts apply a multi-factor test to assess likelihood of confusion, which typically includes the similarity of the marks, the similarity of the goods or services, the strength of the plaintiff’s mark, evidence of actual confusion, the sophistication of the relevant consumers, and the channels of trade through which the goods or services are sold.
Successful infringement plaintiffs can recover the infringer’s profits, the plaintiff’s actual damages, costs of the action, and—in exceptional cases—attorneys’ fees. Courts may also award treble damages for willful infringement.
2. Trademark Dilution
Dilution is a distinct cause of action available only to owners of “famous” marks—those that are widely recognized by the general consuming public. Unlike infringement, dilution does not require proof of consumer confusion. Instead, it targets conduct that diminishes the distinctiveness or tarnishes the reputation of a famous mark.
Dilution by blurring occurs when another party’s use of a similar mark whittles away at the unique association consumers have with the famous mark—for example, using “Coca-Cola” as the name for an unrelated product.
Dilution by tarnishment occurs when a similar mark is used in a way that harms the reputation of the famous mark—for instance, associating a well-known brand with low-quality goods, illegal activity, or offensive content.
The Federal Trademark Dilution Act, as amended by the Trademark Dilution Revision Act of 2006, governs federal dilution claims. Many states have their own dilution statutes that may offer broader protection, applying to marks that are famous within a particular state even if not nationally famous.
3. False Designation of Origin and Unfair Competition
Section 43(a) of the Lanham Act is a broad provision that prohibits any false designation of origin, false description, or false representation in connection with goods or services. This covers not only unregistered trademark infringement but also trade dress infringement, false advertising, and other forms of unfair competition. Trade dress—the overall commercial image of a product, including its packaging, color scheme, and product design—is protectable under this provision if it is distinctive and non-functional.
4. Cybersquatting
The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), provides a cause of action against parties who register, traffic in, or use domain names that are identical or confusingly similar to a distinctive or famous trademark, with a bad faith intent to profit. Remedies include the transfer or cancellation of the offending domain name and statutory damages of up to $100,000 per domain name.
Trademark owners also have recourse through the Uniform Domain-Name Dispute-Resolution Policy (UDRP), an administrative arbitration process administered by ICANN that can result in the transfer or cancellation of an offending domain name—often faster and at lower cost than federal court litigation.
5. State Law Claims
In addition to federal claims, trademark owners frequently assert state law claims for unfair competition, misappropriation, deceptive trade practices, and unjust enrichment. Georgia, like most states, provides independent causes of action for these torts, and some plaintiffs find that state law remedies fill gaps not covered by federal law.
Injunctive Relief: Stopping the Harm Now
In many trademark cases, the most important remedy is not money—it is getting the infringer to stop immediately. Courts can issue temporary restraining orders (TROs) and preliminary injunctions at the outset of a case to halt infringing activity before a full trial on the merits. To obtain a preliminary injunction, the plaintiff must generally show a likelihood of success on the merits, a risk of irreparable harm absent an injunction, that the balance of equities favors the plaintiff, and that the injunction would not disserve the public interest.
The Lanham Act creates a rebuttable presumption of irreparable harm upon a finding of likelihood of success on infringement claims, making it somewhat easier for trademark plaintiffs to obtain preliminary injunctive relief than plaintiffs in other types of commercial litigation.
A Note on Trademark Litigation Strategy
Effective trademark enforcement is rarely about winning every battle in court. It is about deploying litigation strategically as part of a broader brand protection program. Before filing suit, experienced trademark counsel will assess the strength of your mark, the scope of the infringing activity, the financial resources of the defendant, the availability of alternative dispute resolution, and the potential impact of litigation on your business relationships and reputation.
Litigation is a powerful tool—but like any tool, it works best when used at the right time, in the right circumstances, and with a clear objective in mind.
Coming Up in Part 6
In the final installment of this series, we turn to one of the most challenging threats facing brand owners today: counterfeit goods. We will examine the scope of the counterfeiting problem, the legal tools available to combat it—including criminal enforcement, U.S. Customs and Border Protection recordation, and civil litigation—and the practical strategies businesses can deploy to identify, investigate, and stop counterfeiters before they cause irreparable harm to your brand and your customers.
Concerned About Trademark Infringement?
If you believe someone is infringing your trademark or diluting your brand, or if you have questions about brand protection strategies generally, please reach out to me for legal assistance and advice in these areas.
This blog post is provided for general informational purposes only and does not constitute legal advice. Receipt of this information does not create an attorney-client relationship. Trademark and intellectual property law is complex and fact-specific; you should consult qualified legal counsel regarding your particular circumstances.
Cher Gregoire is a BFV attorney focusing on trade secret, restrictive covenant, and trademark infringement litigation as well as brand protection.