Defending against an accusation of trademark infringement

Introduction: When You’re on the Receiving End

Few things can rattle a business like a trademark lawsuit. A letter from opposing counsel arrives—sometimes even before you’ve heard of the other company—accusing you of infringing their mark. Suddenly, you face the specter of expensive litigation, potential damages, reputational risk, and an injunction that could upend your operations. Defending a trademark infringement case is serious business, but it is far from hopeless. With careful strategy, skilled lawyering, and the right experts, defendants can not only survive but sometimes turn the tables.

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Common Defenses in Trademark Litigation

1. No Likelihood of Confusion

The plaintiff must prove that ordinary consumers are likely to confuse your product or service with theirs. Defendants can fight back by:

• Presenting evidence of distinct trade dress or branding

• Showing sophisticated consumer bases less prone to confusion

• Offering expert survey evidence demonstrating little or no consumer confusion

2. Fair Use

Defendants can argue they used the term descriptively (descriptive fair use) or to identify the plaintiff’s product (nominative fair use). For example, a repair shop that truthfully advertises it repairs “Apple computers” is not infringing if it uses the term accurately and not as a brand.

3. Abandonment or Genericness

If the plaintiff has failed to police its mark, or if the mark has become generic (“aspirin” and “escalator” are classic examples), defendants can argue the plaintiff no longer has enforceable rights.

4. Lack of Distinctiveness

Plaintiffs cannot enforce marks that are merely descriptive without secondary meaning. Defendants often challenge whether the plaintiff’s claimed trademark has acquired distinctiveness in the marketplace.

5. Prior Use

If you used the mark in commerce before the plaintiff registered it, you may have superior rights, at least in your geographic area.

6. Statutory and Equitable Defenses

Other defenses include laches (unreasonable delay in suing), acquiescence (plaintiff implicitly allowed the use), and unclean hands (plaintiff acted unfairly in the dispute).

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The Risks of Trademark Litigation

Financial Exposure

Under the Lanham Act, losing defendants can face injunctions, actual damages, disgorgement of profits, treble damages for willful infringement, and even attorneys’ fees in “exceptional cases.” The dollar amounts can be staggering—tens of millions in high-profile disputes.

Reputational Risks

Litigation records are public. Even unfounded allegations of infringement can harm a brand’s reputation, particularly if the plaintiff spins the story in the press. Defendants must consider PR strategy alongside legal defenses.

Business Disruption

Responding to discovery by searching through all your documents, producing executives for depositions, and facing possible injunctions diverts resources from core operations. For startups, litigation can consume limited cash and distract leadership at a critical growth phase.

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Offensive Moves: Declaratory Judgment Actions and Cancellation Proceedings

Sometimes, the best defense is a good offense.

Declaratory Judgment Actions

If a trademark owner threatens litigation but doesn’t sue, defendants can file a declaratory judgment action asking the court to declare that no infringement exists. This lets the defendant choose the forum and timing rather than wait under a cloud of uncertainty.

TTAB Cancellation Proceedings

If the plaintiff’s trademark is weak, generic, abandoned, or fraudulently obtained, defendants can file a cancellation proceeding before the Trademark Trial and Appeal Board (TTAB) to invalidate it. A successful cancellation can end the plaintiff’s case before it really begins.

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The Role of Expert Witnesses and Surveys

Defending a trademark case often turns on expert testimony.

Consumer Surveys

Survey experts can show that only a negligible percentage of consumers were actually confused by the defendant’s mark. Courts routinely rely on this evidence.

Economic Experts

Economists can challenge inflated damages claims by demonstrating that alleged losses are speculative or unrelated to the alleged infringement.

Marketing Experts

Experts in branding and consumer perception can explain how the defendant’s mark is distinct and unlikely to be confused with the plaintiff’s. 

But experts like economists, marketing pros, and linguists aren’t cheap, and even in a contingency-fee case, law firms don’t cover the costs of litigation (other costs include filing, and, if the case goes through discovery and trial, travel, court reporters, hotel, and so on), they only waive their attorneys’ fees.

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Examples of Successful Defenses

Starbucks v. Wolfe’s Borough Coffee (the “Charbucks” case)

A small coffee company sold “Charbucks” coffee. Starbucks sued, claiming dilution and confusion. After years of litigation, courts ultimately found no actionable dilution or confusion, highlighting how defendants can prevail even against corporate giants by showing weak evidence of consumer harm.

KP Permanent Make-Up v. Lasting Impression (2004)

In KP Permanent Make‑Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), the U.S. Supreme Court addressed whether a defendant asserting the “fair use” defense must also demonstrate that its use of a term does not cause consumer confusion. The Court unanimously held that no, the defendant does not have to negate the likelihood of confusion to prevail on fair use. The ruling clarified a critical tension in trademark jurisprudence. Fair use is fair use, regardless of whether a consumer is confused. It’s a First Amendment issue.

Mattel v. MCA Records (2002)

Mattel sued over the pop song “Barbie Girl.” The Ninth Circuit dismissed the case, holding that the First Amendment protected the song’s parody and commentary. This case illustrates how defendants can invoke free speech defenses in creative industries. But parody and satire are both poorly understood. Just invoking a trademark doesn’t make what you’re doing parody, especially if you’re trying to sell something and your “parody” consists of a pun. You’ve got to make some kind of commentary on the underlying trademark or its owners.

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Strategic Considerations for Defendants

Settlement vs. Trial

Litigation is costly. Many defendants negotiate settlements—such as coexistence agreements or phase-out periods—that preserve business continuity while avoiding crushing damages.

Early Case Assessment

Defendants should evaluate the strength of the plaintiff’s mark, the likelihood of confusion, and potential damages at the outset. Early assessment informs whether to settle, fight, or go on the offensive.

Public Relations and Reputation Management

Defendants must think about the court of public opinion as well as the court of law. A proactive communications strategy can prevent reputational harm.

Insurance Coverage

Some commercial general liability (CGL) policies provide coverage for “advertising injury,” which can include trademark claims. Defendants should examine whether insurance can offset defense costs.

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Conclusion: Fighting Smart

Defending a trademark infringement case is not about rolling over—it’s about fighting smart. With the right legal defenses, offensive counterclaims, expert witnesses, and strategic foresight, defendants can reduce damages, protect their reputations, and sometimes even invalidate the plaintiff’s mark entirely.

At DeepLaw, we bring the combined perspective of litigators, IP strategists, and trial lawyers who know the risks but also the opportunities of defending trademark litigation. When the stakes are high, we help clients not only survive the fight but emerge stronger.