Trademark Enforcement Lawyer

You are not required to pursue every infringement. A trademark owner's delay in acting against infringing use can support the equitable defense of laches, which the Lanham Act preserves even against an incontestable registration (15 U.S.C. § 1115(b)(9)). More seriously, a registration can be cancelled at any time if the registered mark becomes the generic name for the goods or services; the test is the primary significance of the registered mark to the relevant public (15 U.S.C. § 1064(3)). We recommend active monitoring and selective enforcement, even with a written response rather than litigation.

Depending on the service, trademark monitoring can cover USPTO new filings, US state trademark registries, domain registrations, and in some cases marketplace listings and social handles. When a mark similar to yours is filed or detected, the service flags it for review. The practical step is evaluating each flagged item: whether the similarity is close enough to create confusion, whether the goods or services overlap, and whether action is warranted. Monitoring gives you the early warning that makes enforcement possible before infringing use becomes established.

You can send a cease-and-desist yourself, but we recommend having an attorney draft it, because the framing of the letter matters legally. We recommend a letter that does not overstate your rights or make threats you cannot support. A trademark lawyer drafts the letter to be accurate and calibrated to the goal of stopping the use.

Trademark infringement requires likelihood of confusion about the source of goods or services. Dilution does not require confusion at all: it protects famous marks against uses that blur their distinctiveness or tarnish their reputation, even when there is no overlap in goods and no realistic confusion. Only marks that are widely recognized by the general public qualify for dilution protection under the Lanham Act. For most small and mid-sized brands, infringement is the more relevant claim.

Naked licensing occurs when a trademark owner licenses the right to use the mark without exercising quality control over the goods or services offered under it. In FreecycleSunnyvale v. Freecycle Network (9th Cir. 2010), the court asked whether the licensor retained contractual rights to control quality, actually controlled quality, or reasonably relied on the licensee to maintain it, and held that a licensor that showed none of these had engaged in naked licensing and abandoned its marks. In Canada, licensed use counts as the owner's use only if the owner has, under the licence, direct or indirect control of the character or quality of the goods or services (Trademarks Act, s. 50(1)).

The cost depends entirely on what is required. I provide clear pricing before any action so you can decide how much to invest relative to the severity of the situation.

It depends on how strong your mark is and how the other party is using it. Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, is entitled to an injunction against another person who, after the mark has become famous, begins using a mark or trade name in commerce that is likely to cause dilution by blurring or by tarnishment, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury (15 U.S.C. § 1125(c)(1)); a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner (15 U.S.C. § 1125(c)(2)(A)). Without a dilution claim, the question is whether the use is likely to cause confusion (15 U.S.C. §§ 1114(1), 1125(a)(1)(A)).

We recommend platform takedown filings (Amazon, Etsy, Meta, TikTok) when the infringement is concentrated on a specific marketplace, and a cease-and-desist letter with a short compliance deadline and a clear escalation path when it is not. Formal proceedings may be necessary when the infringer ignores correspondence or contests the demand: federal court, or the TTAB where the infringer has filed or registered a mark, which decides only rights of registration. The right path depends on where the infringement is occurring and how cooperative the infringer is likely to be.

A cease-and-desist letter is a private communication demanding that the recipient stop a specific activity. It does not require court involvement and is not a court order. Under US trademark law, a letter can give the recipient actual notice of your registration; that matters because a registrant who does not display the statutory registration notice cannot recover profits or damages in an infringement suit unless the defendant had actual notice of the registration. A lawsuit is a formal legal action filed in court that requires the defendant to respond and can result in binding orders, injunctions, and damages awards. We recommend a lawsuit only after other enforcement steps have failed.

Your trademark registrations are the foundation of your enforcement rights. A USPTO registration gives you rights in the US; a CIPO registration gives you rights in Canada. In Abitron Austria GmbH v. Hetronic International, Inc. (2023), the Supreme Court held that 15 U.S.C. §§ 1114(1)(a) and 1125(a)(1) extend only to claims where the claimed infringing use in commerce is domestic. Registered rights in other markets come from registrations there or Madrid Protocol designations.