1. Choose the Forum Around the Claim and Relief Needed
Federal courts have original jurisdiction over Lanham Act claims, but state courts may hear them. State-law theories may affect pleading and removal.
Separate Federal Claims from State Rights
Federal and state trademark rules overlap. The complaint should state the right and basis for each remedy.
- Registered Marks: Lanham Act Section 32 covers qualifying infringement of federally registered marks.
- Unregistered Marks: Section 43(a) may protect some unregistered marks and source identifiers.
- State Law: General Business Law § 360-k applies to marks registered under Article 24, while § 360-l provides injunctive relief for qualifying dilution claims.
Match Injunctive Relief to the Business Risk
An injunction may matter more than money while disputed use still reaches customers. Under 15 U.S.C. § 1116(a), the statute provides a rebuttable presumption of irreparable harm at specified stages.
- Current Use: Identify the listings, ads, packaging, or sales that should stop.
- Proof: Test ownership, priority, protectability, and likely confusion before seeking relief.
- Scope: Tie the requested order to conduct the evidence supports.
2. Measure the Mark before Escalating the Case
Registration can strengthen a claim, but it does not decide infringement. Common-law rights may also apply, with priority and geographic reach often turning on actual use.
Compare Registration with Marketplace Use
Check the registration record against use in commerce. A brand protection and trademark law review can help organize that proof.
- Status: Confirm the owner, registration, goods or services, and status.
- Priority: Preserve dated sales, ads, websites, packaging, and distribution records.
- Common-Law Rights: Map where use and recognition support the claimed right.
Treat Counterfeiting As a Separate Claim Analysis
Counterfeiting is not a stronger label for ordinary similarity. Special federal remedies apply only when the use meets the federal counterfeit rules.
- Mark: Confirm that the asserted mark fits the federal counterfeit definition.
- Evidence: Preserve products, listings, seller data, orders, and payment records.
- Remedies: Compare actual damages and profits with statutory damages under 15 U.S.C. § 1117(c) when available.
3. Build the Damages Record While Testing Settlement
Financial discovery can change case value. Settlement should reflect the evidence, not just the first demand. Trial preparation and negotiation should use the same record.
Separate Profits, Damages, and Costs
Under 15 U.S.C. § 1117(a), qualifying Lanham Act claims may support profits, damages, and costs, subject to the statute and equity. A focused discovery obligations plan can keep proof clear.
- Sales: Identify revenue tied to the challenged goods or services.
- Loss: Keep records that support lost sales or other recoverable harm.
- Costs: Preserve records needed to test claimed deductions from profits.
Know What Settlement Must Fix
A fast settlement helps only if it solves the business problem. Future use, inventory, listings, releases, and payment terms can matter as much as money.
- Early Stage: Define the conduct that must change.
- Discovery Stage: Revalue the case as evidence develops.
- Trial Stage: Compare remaining risk with the value of unresolved relief.
4. Test Counterclaims and Defendant Exposure before Filing
An infringement suit can expose weaknesses in the plaintiff's rights. Nonuse, abandonment, genericness, prior rights, and cancellation theories may shift leverage.
Review the Claim from the Other Side
Ownership and use records should withstand review. Related brand protection work can identify weak points before suit.
- Use: Confirm current use for the goods or services at issue.
- Validity: Assess plausible abandonment, genericness, priority, or cancellation arguments.
- Consistency: Compare the claim with records and prior public statements.
Separate Corporate Acts from Individual Conduct
A company defendant does not answer whether an officer or principal may also face direct liability. Personal participation and veil piercing are different theories.
- Participation: Identify who directed or took part in the challenged acts.
- Structure: Keep direct conduct separate from any veil-piercing claim.
- Risk: Review indemnity and possible insurance without assuming coverage.
5. Coordinate USPTO Proceedings and Cross-Border Enforcement
TTAB proceedings and infringement suits do different jobs. The TTAB decides federal registration rights; courts can decide infringement and grant broader relief.
Use the Right Track for the Right Dispute
An opposition or cancellation may affect registration without ending the dispute. Keep positions consistent when a TTAB matter and court case concern the same mark.
- Opposition: Challenges a pending application.
- Cancellation: Challenges a registration on an available ground.
- Court: Can address infringement, injunctions, and money relief beyond TTAB authority.
Map International Exposure Separately
Domestic trademark rights do not automatically extend abroad. If disputed branding crosses borders, review rights and remedies by country.
- Rights: Identify enforceable rights in each market.
- Actions: Coordinate domestic litigation with needed foreign filing or action.
- Other IP: If copying involves trade secrets, assess trade secret litigation as a separate claim.
6. Frequently Asked Questions
Can a company sue under federal trademark law without a federal registration?
Potentially. Section 43(a) can support qualifying unregistered marks, but the plaintiff still must prove the elements of the claim and the rights asserted.
Can a company recover statutory damages for counterfeit sales?
Potentially. For qualifying counterfeit-mark use, 15 U.S.C. § 1117(c) allows statutory damages instead of actual damages and profits before final judgment.
Can the TTAB award trademark infringement damages?
No. The TTAB decides federal registration rights. It does not decide infringement or award damages or injunctions.
Can an officer be personally liable for trademark infringement?
Potentially. Direct liability depends on the person's conduct and governing law. That issue is separate from piercing the corporate veil.
7. Set the Litigation Strategy before the First Filing
A trademark infringement litigation attorney can connect mark strength, forum, counterfeit relief, damages, counterclaim risk, and parallel proceedings. SJKP's attorneys can review the record and help a business choose an enforcement or defense path that fits the dispute and its business goals.
18 Aug, 2026
