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Houston, TX 77046

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Dallas, TX 75240

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Marcum PC Law Firm

In short, if the court determines that there has been an infringement, the remedy can be a court order which stops the act of infringement, issues money damages equal to the violator’s profits derived from the acts of infringement, and orders the infringing counterfeits or imitations in the possession or under the control of the violator to be delivered to an officer of the court or registrant to be destroyed.

If the court finds that the violator acted with actual knowledge of the registrant’s mark or in bad faith, then the court may enter judgment in an amount not to exceed three times the amount of profits and damages, and award reasonable attorney fees to the prevailing party. If the mark is registered, a registrant is entitled to recover damages only if the violator acted with intent to cause confusion or mistake or to deceive (Tex. Bus. Comm. Code Sec. 16.102).

We Are Being Sued For Trademark Infringement. What Is Going To Happen To Our Business While The Case Is Ongoing?

You have a duty to respond when the plaintiff formally serves the complaint on you. The impact of a lawsuit on your business depends on the facts of how well publicized the case is to the market and whether the court has issued a restraining order against further production or sales.

If you are sued for trademark infringement, a U.S. licensed 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
  • Negotiating a settlement of the lawsuit, for example by agreeing to take certain actions to avoid likelihood of confusion

What Should We Do If We Received A Cease And Desist Letter?

If you receive a cease and desist letter, you should assess whether the plaintiff has superior rights to a valid mark. To support a trademark infringement claim in court, a plaintiff must prove that they own a valid mark, that it has priority (its rights in the mark(s) are senior to the defendant’s), and that the defendant’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks.

When a plaintiff owns a federal trademark registration on the principal register, there is a legal presumption of the validity and ownership of the mark, as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in the court proceedings.

What Evidence Do We Need In Order To Prove We Are Not Infringing On A Trademark?

First, develop evidence to show you are not attempting to create confusion as to the source of goods. Second, assess the various factors to determine whether there is a likelihood of confusion among consumers. The key factors considered in most cases are (1) the degree of similarity between the marks, (2) whether the parties’ goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source, (3) how and where the parties’ goods or services are advertised, marketed, and sold, (4) the purchasing conditions, (5) the range of prospective purchasers of the goods or services, (6) whether there is any evidence of actual confusion caused by the allegedly infringing mark, (7) the defendant’s intent in adopting its mark, and (8) the strength of the plaintiff’s mark.

The particular factors considered in a likelihood-of-confusion analysis will vary from case to case, and the amount and quality of the evidence involved can have a significant impact on the outcome of an infringement lawsuit. You can develop evidence that the mark is not registered, that the plaintiff does not own the trademark, or that the trademark was obtained by fraud such that the presumption of validity and ownership is challenged. Third, assess whether you can prove that your rights to the mark are superior to those of the other party.

For more information on Damages In A Trademark Infringement Lawsuit, an initial consultation is your next best step. Get the information and legal answers you are seeking by calling (713) 714-0073 today.

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