We represent trademark owners enforcing their marks and businesses defending against infringement claims, in Maryland state courts and in federal court. Contingency and hourly fee arrangements are available. Call (410) 752-9300 or use the contact form on this page.
What counts as infringement
Trademark infringement is unauthorized use of a mark, and it runs from deliberate counterfeiting to entirely unintentional overlap. The effects stay consistent whatever the intent. The owner’s rights get violated, the mark’s value is diminished, and consumers may be misled about the source of what they are buying. Dilution of a famous mark is separately actionable under 15 U.S.C. § 1125(c), and that does not require confusion at all.
What an owner must prove
Likelihood of confusion is the core question in an infringement action. Is the defendant’s use of the mark likely to confuse consumers as to the origin of their goods or services? Not actual confusion in every case, and not mere similarity either. Courts assess likelihood of confusion across a range of factors.
Act quickly, and start with a demand
Delay works against you once you discover a violation. The usual first step is to notify the infringing party and demand they stop. A well-drafted cease-and-desist resolves a large share of disputes without litigation, at a fraction of what a lawsuit costs. Where demands get ignored, litigation follows, and by then having moved promptly is part of your case.
What you can recover
Remedies under the Lanham Act, 15 U.S.C. § 1117(a), include the infringer’s profits attributable to the unauthorized use of the mark, and your actual damages, which the court may in some circumstances adjust. Injunctive relief ordering the infringing use to stop is often the remedy that matters most commercially, since the point is usually to end the confusion rather than to be paid for it.
Attorneys’ fees are available too, but only in exceptional cases, and this is worth being precise about. Section 1117(a) permits a court to award reasonable attorney fees to the prevailing party in exceptional cases, not as a matter of course on winning. Budget on the basis that you will bear your own costs and treat a fee award as a possibility rather than an expectation. The same provision can be turned against a claimant who brings an exceptional case of their own.
Domain names and cybersquatting
E-commerce created a category of dispute the Lanham Act was not originally written for, namely whether a trademark owner can control use of the mark in a domain name. If you are in a domain name dispute, or have been accused of cybersquatting, get advice early. These matters have their own procedures and timetables, and they reward moving quickly.
Defending an infringement claim
Three defenses do most of the work. Fair use applies where the term was used for its ordinary descriptive meaning, or to refer to the owner’s own goods, rather than to trade on the mark or cause confusion. Parody can be protected under the First Amendment in certain circumstances. Criticism and commentary likewise, where the use is not straightforwardly commercial.
The First Amendment defenses are narrower than people tend to assume, and how commercial the use is usually decides them.
Talk to a Maryland trademark litigation attorney
Whether you are enforcing a mark or answering a claim, the early decisions shape the cost of everything after. Call (410) 752-9300 or use the contact form on this page. See also trademark registration and protection.