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  • Writer's pictureMichael W. Schroeder

What You Need To Know About Trademark Infringement Defenses

Trademarks are recognizable words, combinations, or designs that are the unique identification of a product, service, or brand. They are a form of intellectual property and help in distinguishing products and brands from others. Be it recognizable logos and designs or phrasing and words; trademarks allow individuals to identify different brands and companies as well as their uniquely created services and products.

While you must take all the necessary steps to safeguard these marks and minimize litigation and disputes, having a trademark alone does not provide you protection against infringement. In the prosecution of trademark infringement, plaintiffs usually have a full range of remedies they can seek, including monetary damages and injunctive relief.

One of the best ways to guard against trademark infringement is to get your trademark federally registered.  Your ownership of a federally registered trademark shields you from monetary damages resulting from an infringement.  The avoidance of this potential liability is a primary benefit of federal registration and a powerful tool in defense of infringement claims.  However, even with a registration, your trademark still may be challenged and/or cancelled by third parties claiming superior rights to a confusingly similar mark.  Therefore, it is important to be aware of the types of defenses available in trademark disputes.

Trademark Infringement Defendants

Irrespective of whether you are an established company, a fast-growing startup, or an ambitious small-time entrepreneur, it is important to understand how trademarks work. In the same vein, you must also know what options and rights you have when it comes to raising a defense to protect your company. Here, we share some of the most vital concepts when it comes to trademark infringement.


When it comes to understanding trademark infringement, you must first know exactly what trademarks are. A trademark is any symbol or word that distinguishes a brand and its products/services from others. Just like intellectual property protections, registered trademarks are preemptive measures that offer exclusive rights to a distinctive mark. Furthermore, registered trademarks also ensure that public consumers can recognize services and goods from a particular company or source and are not misled or confused.  


Trademark owners can sue for infringement under the Lanham Act if their claims meet the standard of “likelihood of confusion.” This means that the trademark use would confuse consumers regarding the product source. In order to determine if a plaintiff who is alleging trademark infringement meets this standard, courts usually consider several factors, including:

The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression

The proximity of the services/goods, target consumers and trade channels

The defendant’s intent

Strength of the mark

Fame of the mark

Sophistication of the consumer

Proof there was actual “confusion”

Potential Damages & Liability

To prevail on a claim of infringement under the Lanham Act, it is necessary for plaintiffs to show their trademark use, its commercial use, and the likelihood of confusion. They must also account for the damage caused due to the alleged infringement.

In case you have been sued for infringement, the following consequences are applicable:

Monetary damages

An order directing you to pay the attorney fee of the plaintiff (in exceptional cases)

Injunctive relief, which refers to a court order limiting or stopping your use of the trademark

An accounting of profits as well as a disgorgement of profits due to your illegal use of the mark

Affirmative Defenses Of Trademark Infringement

Defendants who have been accused of infringement have a number of options to prepare their defense. That said, these options depend on the facts and circumstances of the case. They typically include affirmative defenses such as parody and fair use.


You can use a trademark for parody. In cases of trademarks, courts uphold the First Amendment rights, which permits certain trademark parodies that aren’t overtly linked to commercial use.  You can use parody as an infringement defense, although there are disparagement provisions in federal trademark law as well as potential causes of action to show slander if the use of somebody else’s trademark is excessively harmful or disparaging.  

Fair Use

The defense of “fair use” can be divided into two types:

a. Descriptive Fair Use

The defense of classic fair use concerns the use of a mark in good faith for its descriptive meaning instead of its secondary meaning. The secondary meaning is when the consumers of a specific brand associate a specific mark or term with a particular brand or product provider. This typically happens when marks have descriptive attributes too.

b. Nominative Fair Use

Nominative use is another form of the defense of fair use. It is when the trademark of another is  referenced to describe the other’s product, or in comparison to one’s own product.

Contact A TTAB Litigation Attorney

If you take a specific approach to defend against an infringement lawsuit, you need an intimate understanding of the available options and laws, a meticulous analysis of the facts, and the competence to execute strategies inside and outside the courtroom.  At Trademark.Legal, we have vast experience in handling the prosecution of trademark applications and trademark litigation. This includes representing defendants facing trademark infringement claims and plaintiffs seeking damages and injunctive relief.   

The trademark lawyers in our team leverage their insight to aid clients in understanding the liabilities they face as well as particular defense strategies that they can raise on the clients’ behalf.  We have all the know-how of the industry, and we keep ourselves updated with the latest trademark and infringement laws in the country.  In case you have any queries regarding a trademark infringement case, Trademark.Legal can help you out. Our nationally recognized lawyers in Los Angeles County are just a call away. Call at 323-553-1541 or write to us at to speak to a lawyer.

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