Suing a Copycat: The Trademark Infringement Litigation Roadmap

Suing a Copycat: The Trademark Infringement Litigation Roadmap

When a cease-and-desist letter fails to stop a persistent infringer, litigation becomes the necessary path to protect your brand's integrity and market share. Filing a trademark infringement lawsuit in U.S. federal court is a complex, multi-stage process that requires a clear strategy from the outset.

Phase 1: Pre-Suit Investigation and Complaint Filing

Before filing, I conduct exhaustive due diligence to ensure the strongest possible case. This includes a comprehensive investigation of the infringer's use, market presence, and financial viability. The lawsuit begins with the filing of a Complaint in a U.S. District Court, which formally outlines the claims, including:

•       Trademark Infringement (15 U.S.C. § 1114): Alleging the defendant's use is likely to cause confusion.

•       Unfair Competition (15 U.S.C. § 1125(a)): Alleging false designation of origin.

•       Trademark Dilution (15 U.S.C. § 1125(c)): If the mark is famous, alleging blurring or tarnishment.

Phase 2: Discovery and Motion Practice

Discovery is the fact-finding phase where both sides exchange information. This is often the most time-consuming and expensive part of the process. I use targeted discovery to uncover evidence of the defendant's intent, the scope of their sales, and any evidence of actual consumer confusion. Key discovery tools include:

•       Interrogatories: Written questions requiring sworn answers.

•       Requests for Production of Documents: Demanding sales records, marketing materials, and internal communications.

•       Depositions: Live, sworn testimony from key witnesses.

During this phase, I may file a Motion for Preliminary Injunction to immediately stop the infringer's activities while the case is pending. This requires demonstrating a likelihood of success on the merits and irreparable harm to my client's brand.

Phase 3: Trial and Remedies

If the case does not settle, it proceeds to trial. The primary goal is to prove the likelihood of confusion to the judge or jury. Successful plaintiffs can obtain several powerful remedies under the Lanham Act:

•       Injunctive Relief: A permanent court order prohibiting the defendant from using the infringing mark. This is often the most important remedy.

•       Monetary Damages:

◦       Actual Damages: Losses suffered by the plaintiff.

◦       Defendant's Profits: Profits earned by the infringer.

◦       Treble Damages (15 U.S.C. § 1117): If the infringement is found to be willful or intentional, the court can award up to three times the actual damages.

◦       Attorneys' Fees: In "exceptional cases," the court may award my client their legal fees.

When your brand is under attack, I provide the aggressive, strategic litigation necessary to hold copycats accountable and secure the full protection of the law.

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.