Michael J. Foycik Jr., Esq.

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Someone is infringing your trademark.  Now you want to rush out and sue them!  Let's stop and talk about that for a minute. 

 Let's just mention that there can be a number of defenses to a trademark lawsuit.  Such defenses depend on the answers to the following (and possibly other) questions, such as: Was the infringer actually the first to use it?  Can your trademark registration be challenged, or is it incontestible?  Were you actually damaged?  Is the alleged infringer's trademark really close enough to your trademark?  Is the whole trademark infringed, or just part of it?  Is your trademark a “word” mark or a logo (picture) mark? 

Now let's say there are no defenses to the lawsuit, and victory is absolutely certain.  This is very hypothetical, of course, since there is always some uncertainly.  But, assuming this perfect situation, should you still go ahead and sue?  The answer may be “no” for a number of reasons!

So don't sue?  Why not?  Well, for starters, if the infringement was not“intentional” (within the legal meaning of that term), then it can be very difficult to obtain meaningful damages.  That's right, you can win the lawsuit and yet get little or no cash.  The most common result of a successful trademark infringement lawsuit is an injunction – an order to stop the infringement.  Even worse, the injunction sometimes gives the infringer ample time to use up their stock of infringing goods. 

But, the above is for infringement that is not “intentional” – what if the infringer is intentionally infringing?  That's different, and you can ask for actual damages, and/or lost profits, and/or attorneys fee, and/or costs, among other things.  Notice I said you can ask!  However, asking is not the same as getting.  Worse, it can be difficult to prove lost profits or actual damages. 

Even in a good case, with ample proof, it can be difficult to get a damage award that really compensates for the time and effort of litigation.  Money is not the only cost of litigation.  And, a damage award is not the same as actually receiving money, since defendants may not have assets to cover the damage award, may declare bankruptcy, and may even simply hide their money. 

So, when should you sue for trademark infringement?  Simple – when it affects your business, or really  hurts your trademark, or when the infringer is just making too much money from it and is worth suing.  Yes, you can lose money suing an infringer that is poor, but if they are taking away your business then it may well be worth it. 

Of course, the above is not legal advice.  For that, you'd need to consult a trademark attorney and then discuss the specifics of your case.  

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.