Receiving a formal notice of trademark infringement is a high-stakes event. For most businesses, this letter represents a significant threat to their brand identity and market position. A meticulous response is required to mitigate risk and preserve your legal rights.
1. Exercise Immediate Restraint
Do not contact the opposing party or their counsel immediately. Any statement you make can be used as evidence in future litigation. Initial reactions are often emotional. Strategic silence provides the time necessary for a thorough legal analysis.
2. Evaluate the Merits of the Claim
Every infringement claim hinges on the "likelihood of confusion" standard. You must determine if the marks are sufficiently similar to confuse a typical consumer.
- Priority of Use: Determine who used the mark in commerce first.
- Registration Status: Verify if the mark is registered on the Principal Register of the USPTO.
- Scope of Goods: Analyze if the products or services actually compete in the same marketplace.
3. Develop a Response Strategy
Your response dictates the trajectory of the dispute. A standard response generally falls into one of three categories: The Rebuttal, The Negotiation, or The Affirmative Action (such as filing a declaratory judgment).
4. The Advantage of Trial-Ready Counsel
Most trademark disputes are settled before trial. However, your leverage in settlement depends entirely on your willingness to litigate. Opposing counsel often targets firms they perceive as "paper-only" practitioners. Wingert Grebing Brubaker & Walshok LLP has been trying cases in San Diego for nearly 60 years. Our attorneys are dedicated and efficient trial lawyers.