The first notice a person or business receives of trademark infringement is usually a cease and desist letter in which the sender claims rights to the trademark and includes an assertion that its rights have been violated. If the receiver of the letter fails to comply by ending the conduct that infringes on the trademark or fails to respond to the letter, a lawsuit could be the next step taken to enforce the trademark.

A trademark is a word, symbol, design or phrase identifying and distinguishing the products of a company or an individual from those of another. A service mark is similar to a trademark except that it is used in reference to services rather than goods. Trademarks and service marks usually are registered with the the United States Patent and Trademark Office to provide notice to the public of the rights of the business or individual to the trademark.

The following are the common defenses used in response to a cease and desist letter or a lawsuit claiming trademark infringement:

• Laches
• Collateral estoppel
• Unclean hands
• Fair Use

The Defense of Laches

When another person fails or neglects to assert a claim in a timely manner, the party against whom the claim is made can claim prejudice and raise the defense of laches. The defense is based on the fact that witnesses and evidence might no longer be available, or other circumstances might make it difficult to defend the claim. In many ways, laches is similar to a statute of limitations. It is up to the court to determine if the circumstances justify dismissal of the claim.

Collateral Estoppel

A person against whom a claim is made for trademark counterfeit might assert a defense of collateral estoppel. The defense is based upon a prior court determination resolving the claim against the claimant, or it might move that the claimant’s prior statements or actions were inconsistent with the claim of trademark counterfeiting.

The Clean Hands Doctrine

A person claiming to be the victim of trademark counterfeiting can be denied the right to make the claim if it can be proven that the claimant acted in bad faith or acted unethically regarding the trademark. The Clean Hands Doctrine is an equitable defense that must be proven by the person raising it.

Collateral Use or Fair Use Defenses

Trademark infringement usually does not include the use of the trademark in writing about the product or in listing it as an ingredient or component of another product. Fair use and collateral use do not protect a person from a trademark infringement claim when the use is to advertise another product.

If you have been unjustly accused of copyright counterfeit, call 713-862-8880 to get help from Houston attorney Rand Mintzer.