How does a trademark infringement lawsuit begin?
A trademark lawsuit begins when the trademark owner files a complaint with a court alleging trademark infringement. Among other things, the complaint names the parties involved and sets forth the allegations that form the basis of the lawsuit. Trademark owners who decide to sue may file their complaint in either state court or federal court, depending on the circumstances. However, in most cases, the trademark owner, as plaintiff, will choose federal court. Even when a plaintiff chooses state court, it may be possible for the defendant to have the case “removed” to federal court.
Frequently, either before or at the time a complaint is filed, the trademark owner or the owner’s trademark attorney may send you a letter or otherwise contact you to make claims about the owner’s trademark rights and demand that you take certain actions, such as ceasing use of your mark.
What are my options to respond to the suit?
Your duty to respond to a complaint is triggered when the plaintiff formally “serves” the complaint on you, along with a “summons,” which is a court notice requiring you to appear before the court and respond to the complaint by a certain date. If you are sued, you must formally respond to the complaint, either by filing a document called an “answer” with the court, or by filing a motion based on one of the grounds set forth in Rule 12 of the Federal Rules of Civil Procedure, if any apply. You must file the answer or any applicable Rule 12 motion within the time period set by the court’s rules and serve a copy on the plaintiff. If you fail to timely file an appropriate response to the complaint, the court may enter a default judgment against you and order you to pay damages or perform other remedial actions.
These are only the first steps of a trademark litigation process that can be very complicated. If you are sued for trademark infringement, an attorney experienced in trademark litigation can assist you in deciding the best course of action, which may include one or more of the following options:
• Challenging the claimed trademark;
• Denying that the trademark owner has proved infringement;
• Asserting a defense to the alleged infringement; and/or
• Negotiating a settlement of the lawsuit by, for example, agreeing to take certain actions to avoid likelihood of confusion.
When considering options, keep in mind that litigation is usually expensive and time-consuming, and it can take years before a court delivers a decision. And, even when a court reaches a decision, it may be appealed to higher courts, resulting in additional time and expense.
What if the trademark is not federally registered, or the registration expired or was cancelled?
Federal registration is not required to establish trademark rights. Even if a trademark registration expires or is cancelled, the trademark owner may continue to have “common law” rights in the mark. Common law rights arise from actual use of a mark for particular goods or services and may allow the common law user to successfully challenge another party’s use in court.
How can I use USPTO records to find out more information about the claimed trademark and who owns it?
You can use the Trademark Electronic Search System (TESS) to search the United States Patent and Trademark Office (“USPTO”) database of applications and registrations. If you know the application serial number or registration number for the particular mark, you may use the Trademark Status and Document Retrieval (TSDR) system to view/download relevant application and registration records.
How can I challenge a trademark registration or application?
Several options exist to challenge another party’s trademark registration or application, depending on the particular circumstances and grounds for challenging:
• You may challenge a trademark registration issued by the USPTO by filing a petition to cancel the registration with the Trademark Trial & Appeal Board (“TTAB”).
• You may challenge an application for trademark registration at the USPTO by filing an opposition with the TTAB within 30 days after it is published in the Official Gazette.
• You may file a declaratory judgment lawsuit, asking a court to declare that your mark does not infringe the trademark owner’s mark, and/or that the trademark owner’s mark is invalid.
• If you are already a defendant in an infringement lawsuit, you may assert an “affirmative defense” and/or a counterclaim against the plaintiff challenging the validity of the plaintiff’s trademark.
Practice Tip: If you are personally sued for trademark infringement, you may represent yourself pro se. However, if a corporation has been sued, only an attorney may represent it in court. An Indiana attorney with trademark expertise can help advise you about the various options available to challenge trademark registrations and applications.
The information presented on this site does not constitute legal advice. It should not be considered to replace advice from an Indiana trademark attorney.