Defending Against Infringement Threats: Your Legal Shield

Defending Against Infringement Threats: Your Legal Shield

Receiving a cease-and-desist letter or, worse, a summons and complaint, can be alarming. However, being accused of trademark infringement does not mean you are guilty. Many claims are based on weak legal grounds, and a robust defense can often lead to a dismissal or a favorable settlement. My first step is to act as your legal shield, immediately assessing the threat and formulating a counter-strategy.

The Three Pillars of Trademark Infringement Defense

I build a defense strategy around challenging the plaintiff's case on its merits or asserting affirmative defenses that excuse the alleged infringement.

1      Challenging the Plaintiff's Case: The burden of proof is on the plaintiff. I challenge the core elements of their claim:

◦       No Likelihood of Confusion: I argue that consumers are not likely to be confused, often by highlighting differences in the marks, the goods/services, or the channels of trade.

◦       Invalidity of the Plaintiff's Mark: I may challenge the validity of the plaintiff's mark, arguing it is merely descriptive, generic, or abandoned.

◦       Prior Use (Tacking/Common Law Rights): I may assert that my client was the first to use the mark in commerce in a specific geographic area, establishing superior common law rights.

2      Asserting Affirmative Defenses: Even if some confusion exists, certain legal doctrines can provide a complete defense:

◦       Fair Use: This is a powerful defense where the defendant uses the plaintiff's mark not as a source identifier, but descriptively (to describe their own goods) or nominatively (to refer to the plaintiff's goods).

◦       Laches/Acquiescence: I argue that the plaintiff waited too long to enforce their rights (laches) or actively consented to my client's use (acquiescence).

◦       First Amendment/Parody: For expressive works, I may assert a First Amendment defense, arguing the use is a parody, commentary, or artistic expression.

3      Counterclaims and Strategic Offense: In some cases, the best defense is a good offense. If the plaintiff's mark is weak or they have engaged in improper conduct, I may file a counterclaim seeking to cancel their registration or alleging unfair competition. This shifts the dynamic of the litigation and puts pressure on the plaintiff to settle.

If you have been accused of infringement, do not respond without legal counsel. I provide the immediate, aggressive defense necessary to protect your business from unwarranted legal threats.

Legal Disclaimer

This article is intended for informational purposes only and does not constitute legal advice. The information provided herein is general in nature and may not apply to your specific circumstances. Trademark law is complex and constantly evolving. Therefore, you should consult with a qualified intellectual property attorney for advice tailored to your individual needs and situation. No attorney-client relationship is formed by reading this article.