Marcum PC Law Firm

Houston Office
1 Greenway Plaza, Suite 100
Houston, TX 77046

Dallas Office
13155 Noel Rd., Suite 900
Dallas, TX 75240

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Houston Office: (713) 270-0097

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Marcum PC Law Firm

The first step is to ensure that you have valid, exclusive rights to the trademark. The second step is to confirm that another person is infringing the trademark by using it in commerce in a way that causes a likelihood of confusion, mistake, or deception about the origin of the goods. Third, you should have a competent attorney send a notice letter that includes a demand to cease and desist from infringing the mark.

In parallel to these actions, you will need to substantiate your infringement claim with actual damages and calculate what the infringement is costing you in terms of dollars. If you are selling on Amazon and find another seller infringing your mark, then you can file a complaint on Amazon’s report infringement platform. However, beware of the ‘first sale doctrine’ or facts indicating breach of a distribution contract rather than an actual trademark infringement.

Is There A Statute Of Limitations On Trademark Infringement, Unfair Competition, Or Trademark Dilution?

Most trademark cases fall under the federal Lanham Act, which includes no statute of limitations for trademark claims. Unlike Lanham Act claims, Texas law contains a statute of limitations for common law trademark claims, including infringement, unfair competition, and dilution. Federal courts have applied Texas’s four-year statute of limitations to trademark infringement claims and Texas’s two-year statute of limitations to unfair competition claims based on trademark infringement.

Bear in mind that Texas law treats trademark infringement as a continuing tort, which means the cause of action does not accrue until the allegedly wrongful conduct ends. However, federal courts have recognized that the laches defense is available against plaintiffs who have waited too long to file federal trademark suits. To prevail on a laches defense, a defendant must show the following:

  • delay in asserting one’s trademark rights,
  • lack of excuse for the delay, and
  • undue prejudice to the alleged infringer caused by the delay.

This means that federal judges can determine an appropriate amount of time to give injured parties to sue by applying the equitable concept called laches, which means too much time has passed such that it would not be fair to require the defendant to defend an infringement lawsuit.

Texas also applies a three-year limitations period to misappropriation of trade secret claims. As soon as you notice infringement, the best course of action is to document the unauthorized use of your trademark and contact a competent intellectual property attorney. For example, if you see a trademark very similar to yours on a product, buy the product and keep the receipt to show the date you purchased it. If you see a trademark on a website, print it off the website and make sure the date is visible. Your attorney will want to see the extent of the use, which can help in an investigation.

My advice is to move quickly since the statute of limitations period doesn’t start until consumers experience confusion about the two trademarks; whether your infringer has a market presence will likely determine whether confusion exists, and the impact on your sales will help determine your damages.

For more information on Starting A Trademark Infringement Lawsuit, an initial consultation is your next best step. Get the information and legal answers you are seeking by calling (713) 270-0097 today.

Marcum PC Law Firm

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