New York Trademark Litigation Attorney

Trademark litigation is an important legal process used to safeguard a company’s brand and reputation. In New York, trademark litigation is a frequent issue due to the high number of businesses and entrepreneurs operating within the state. This page will provide an overview of trademark law in New York, including trademark infringement, preparing for trademark litigation, the trademark litigation process, damages, defending against a trademark infringement claim, alternative trademark dispute resolution, international trademark litigation, and working with a trademark litigation attorney.

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Understanding Trademark Law in New York

Trademark law in New York is governed primarily by the Lanham Act, which defines a trademark as a unique word, symbol, or phrase used to differentiate a company’s goods or services from those of others. A trademark must be unique and not likely to cause confusion with existing trademarks.

Trademarks can be registered with the federal government, the state government, or established through common law use. While federal registration offers the most protection, state registration and common law use can also provide some level of protection.

Given the complexity of trademark law, it is important to work with a skilled trademark attorney who can provide guidance on registering and protecting trademarks, as well as litigating disputes.

Trademark Infringement: What It Is and How It Happens

Trademark infringement occurs when a company uses a trademark that is similar to another company’s trademark, resulting in confusion among consumers. There are two types of trademark infringement: likelihood of confusion and dilution.

Likelihood of confusion infringement happens when consumers are likely to mistake one company’s product or service for another company’s product or service due to the similarity of the trademarks.

Dilution infringement takes place when a company uses a famous trademark in a way that reduces its value. To prove trademark infringement, a plaintiff must demonstrate ownership of a valid trademark, the similarity of the defendant’s trademark, and the likelihood of confusion among consumers.

Preparing for Trademark Litigation in New York

Before initiating trademark litigation, it is necessary to identify potential infringers and gather evidence to support a claim. It is also important to hire an experienced trademark litigation attorney who can guide the preparation for litigation. Settlement negotiations may be an option before initiating litigation, which can save both parties time and money.

The Trademark Litigation Process in New York

The process for trademark litigation in New York involves several stages, including filing a complaint and answer, discovery, pretrial motions, trial, and appeals. During discovery, both parties collect evidence through depositions and document requests. Pretrial motions can include motions to dismiss, motions for summary judgment, and motions to exclude evidence.

If the case goes to trial, a judge or jury will decide whether trademark infringement occurred. If the plaintiff wins, they may receive damages and injunctive relief. The injunctive relief could involve a court order to stop using the infringing trademark.

Damages in Trademark Litigation

A plaintiff who proves trademark infringement may be awarded actual damages, profits, or statutory damages. Actual damages compensate the plaintiff for losses resulting from the infringement. Profits represent the amount the infringing company made from the plaintiff’s trademark. Statutory damages are predetermined damages that can be awarded without evidence of actual damages.

In addition to injunctions, other remedies may be awarded, such as corrective advertising or destruction of infringing goods.

Defending Against a Trademark Infringement Claim in New York

If a company receives a cease and desist letter regarding trademark infringement, it is crucial to respond promptly and seek advice from an attorney experienced in trademark litigation. A knowledgeable attorney can prepare a defense and help craft a response to the letter. Careful consideration should be given to the response to avoid admissions of infringement or creating additional legal issues.

Responding to a Cease and Desist Letter

When a trademark owner believes their trademark is being infringed, they may send a cease and desist letter to the alleged infringer, demanding that they stop using the mark. If you receive a cease and desist letter, it is important to take it seriously and respond appropriately.

Your response should be crafted carefully to avoid making any admissions of infringement or creating additional legal problems. A trademark litigation attorney can help you craft an appropriate response that protects your legal rights while attempting to resolve the issue.

Preparing a Defense

When facing a trademark infringement claim, it is crucial to prepare a strong defense. This may include conducting an investigation to gather evidence and identify weaknesses in the plaintiff’s case.

Some possible defenses to a trademark infringement claim include:

  • Fair use: If the alleged infringement constitutes fair use of the mark, such as using it for criticism, commentary, news reporting, teaching, scholarship, or research, you may have a strong defense.
  • Generic or descriptive use: If the alleged infringing use is generic or descriptive, meaning that it is commonly used to describe a type of product or service rather than to identify a specific source of goods or services, you may have a strong defense.
  • Prior use: If you can show that you have been using the mark in question prior to the plaintiff, you may be able to establish a defense of prior use.
  • Lack of likelihood of confusion: If you can show that your use of the mark is unlikely to cause confusion among consumers as to the source of goods or services, you may be able to establish a defense.

Settlement Negotiations

In some cases, a settlement may be reached through negotiations, which can help avoid the cost and uncertainty of litigation. A trademark litigation attorney can assist with evaluating the strengths and weaknesses of the case and negotiating a favorable settlement.

If settlement negotiations are not successful, litigation may be necessary. Possible litigation strategies include seeking summary judgment, presenting a persuasive case to a jury, and pursuing appeals if necessary.

Overall, it is important to work with an experienced trademark litigation attorney who can provide guidance and develop a strategy tailored to the specific circumstances of the case.

Litigation Strategies

If settlement negotiations are unsuccessful or not appropriate, litigation may be necessary. A trademark litigation attorney can develop a strategy tailored to your case’s unique facts. Potential strategies include obtaining summary judgment, presenting your case to a jury, or pursuing an appeal to a higher court.

Some possible litigation strategies include:

  • Summary judgment: If you can show that there are no genuine issues of material fact and that you are entitled to judgment as a matter of law, you may be able to obtain summary judgment in your favor.
  • Jury trial: If your case proceeds to trial, a skilled attorney can help you present your case to a jury in a persuasive and effective manner.
  • Appeals: If you are dissatisfied with the outcome of your case, you may be able to pursue an appeal to a higher court.

Alternative Dispute Resolution in Trademark Litigation

Alternative dispute resolution (ADR) can be a more suitable method for resolving trademark disputes than traditional litigation. Mediation and arbitration can be less adversarial, faster, and less expensive than litigation.


In mediation, a mediator, a neutral third party, assists the parties in reaching a mutually acceptable resolution. The mediator facilitates communication and negotiation between the parties but does not make a decision.


In arbitration, a neutral third party, the arbitrator, listens to evidence and arguments from both sides and makes a binding decision. The arbitrator’s decision is usually final and binding, with limited opportunities for appeal.

Pros and Cons of ADR in Trademark Litigation

While arbitration and mediation can be useful tools for resolving trademark disputes, they are not without their drawbacks. Here are some of the pros and cons of using ADR in trademark litigation:


  • Confidentiality: ADR proceedings are generally confidential, which can be beneficial for businesses that wish to avoid negative publicity or public disclosure of sensitive information.
  • Cost-effective: ADR can be less expensive than traditional litigation, particularly if the parties can reach a settlement early in the process.
  • Flexibility: ADR proceedings can be tailored to the specific needs of the parties, allowing for more creative and customized solutions.
  • Speed: ADR proceedings can be quicker than traditional litigation, which can be particularly important for businesses that need to resolve disputes quickly to protect their interests.


  • Lack of formal discovery: ADR proceedings typically involve limited discovery, which can make it more difficult to gather evidence to support a claim or defense.
  • Limited judicial oversight: In ADR, the arbitrator or mediator has limited power to enforce the parties’ agreement or make a final decision. If the parties are unable to reach a settlement, they may need to pursue traditional litigation to resolve the dispute.
  • Limited appeal options: The parties generally have limited opportunities to appeal an arbitrator’s decision, which can be problematic if the decision is incorrect or unfair.
  • Inconsistency: Because ADR proceedings are not subject to formal rules of evidence or procedure, there can be inconsistencies in how different arbitrators or mediators approach similar disputes.

Working with a Trademark Litigation Attorney in New York

Trademark litigation in New York can be a complicated process. It’s important to work with a skilled attorney who has experience in trademark law and litigation. Look for an attorney with a proven track record and references from past clients. Ensure that the attorney is licensed to practice law in New York and has experience litigating cases in the state. It’s also important to choose an attorney with experience representing clients in your industry.

Identifying the Right Attorney for Your Case

When selecting a trademark litigation attorney, it is essential to choose someone with experience in trademark law and litigation. Look for an attorney who has a track record of success in trademark litigation and who can provide references from past clients.

Communicating Effectively with Your Attorney

Effective communication is key in any legal case. Choose an attorney who is responsive and communicative and who will keep you informed about the status of your case.

Collaborating with Your Attorney Throughout the Litigation Process

Throughout the litigation process, collaborate closely with your attorney by providing relevant information and documents, responding promptly to requests for information, and working together to develop a legal strategy that aligns with your business goals.

It’s essential to understand the legal issues and procedures involved in your case. Don’t hesitate to ask questions if there’s anything you don’t understand. Your attorney should keep you informed about the status of your case and any important developments.

Ultimately, you will need to make tough decisions based on your business interests and the strength of your case. Your attorney can provide guidance and advice, but the final decisions are yours to make.

Hiring a Trademark Litigation Attorney in NY

In conclusion, trademark litigation is a crucial process for safeguarding your business interests, but it can be complicated and challenging. To navigate this process successfully, it’s important to seek the guidance of a knowledgeable trademark litigation attorney who can assist you in understanding the legal system and accomplishing your objectives.

Collaborating closely with your attorney and comprehending the fundamentals of trademark law can increase your likelihood of prevailing in trademark litigation and protecting your business interests.

It’s critical to remain proactive, strategic, and cooperative throughout the litigation process to achieve favorable outcomes. With a competent legal team by your side, you can safeguard your business and achieve your goals in an ever-changing marketplace.