What to Expect in Trademark Litigation: A Step-by-Step Guide
Trademark litigation can be long, expensive, and unpredictable—but it’s sometimes necessary to protect your brand. Whether you’re enforcing your rights or defending your company against a claim, understanding how the process works is critical.
Here’s a breakdown of the key stages of trademark litigation and what to expect along the way.
1. The Pre-Litigation Phase: Demand Letters and Settlement Talks
Trademark disputes typically start with a cease and desist letter, also known as a demand letter. This letter puts the other side on notice that their use of a trademark is believed to be infringing and demands that they stop.
From there, the two sides may exchange letters or have their attorneys jump on phone calls to explore possible resolutions. Sometimes, a party agrees to stop using the mark. In other cases, the parties may negotiate coexistence agreements, setting clear rules about how both trademarks can exist in the marketplace.
The vast majority of trademark disputes start with this type of letter because litigation is expensive and outcomes are uncertain. Unlike personal injury cases, there’s usually no insurance company willing to pay for attorneys’ fees or damages. And there is no clear-cut way to prove financial loss or harm.
Unless a business is prepared to invest hundreds of thousands (or millions) of dollars to protect a brand, sending a letter and exploring options for settlement is often the more practical route.
2. Filing a Trademark Infringement Lawsuit
If negotiations break down, the next step is filing a lawsuit in federal court. Most trademark cases are heard in federal—not state—court. That’s because:
- Most disputes involve interstate commerce.
- The amount in controversy often exceeds $75,000, meeting the threshold for federal jurisdiction.
- Federal courts are more experienced in handling IP law.
While plaintiffs might prefer to file in their home district, filing where the defendant is located helps avoid time-consuming challenges to the venue that can stall the case and drive up costs.
Once filed, the court officially opens the case—and the litigation clock starts ticking.
3. The Answer and Early Motions
After being served, the defendant must respond by filing an Answer—a document that admits or denies the allegations. But that’s not all.
Defendants often start by filing a ‘Motion to Dismiss.’ This type of motion asks the court to toss out all or part of the lawsuit. These motions argue that even if everything in the complaint is true, the plaintiff hasn’t stated a valid legal claim.
Courts may dismiss some claims, but full dismissal in trademark cases is rare. However, even partial motions can delay proceedings and increase legal expenses.
It’s also common for parties to revisit settlement talks at this stage—especially as the reality of litigation is settles in.
4. Discovery: The Most Expensive Phase
If the case survives dismissal, it moves into discovery—the process where both sides exchange evidence.
Discovery in trademark litigation can be exhaustive. It includes:
- Document production
Thousands of internal documents, emails, and financial records may be requested. - Depositions
Key individuals, such as executives or marketing personnel, are interviewed under oath—often for a full day at a time. - Expert witnesses
Most cases involve consumer surveys to measure confusion and damages. These surveys (and the experts who run them) can cost $150,000–$200,000 or more.
Both sides will seek to prove (or disprove) key elements such as, whether:
- Consumers are actually confused.
- The purported infringement caused financial harm.
- The use of the trademark was intentional or done in good faith.
Discovery is often the phase that tests a party’s endurance. Disputes over what must be turned over are common, and the sheer volume of work can slow the case to a crawl.
For many parties, discovery fatigue sets in—and settlement becomes more attractive than seeing the case through to trial.
5. Motions for Summary Judgment
Once discovery ends, either party may file a ‘Motion for Summary Judgment.’ This is a motion that asks a court to rule on the case without going to trial.
In reality, summary judgment rarely ends a trademark case entirely. Courts may resolve narrow issues, but most trademark cases hinge on factual questions—like whether there’s a likelihood of confusion—which are better left to a jury.
Still, a Motion for Summary Judgment can streamline a case and help narrow the issues heading into trial.
6. Trial: Presenting the Case in Court
If no settlement is reached, the case proceeds to trial—either before a judge or a jury.
Each side presents the evidence they’ve gathered, which includes:
- Witness testimony (including executives, employees, and survey experts).
- Exhibits such as marketing materials, financial records, and emails.
- Expert survey results are explained to the judge or jury.
Trials typically last several days to a few weeks, depending on the complexity of the case.
At the end, the judge or jury delivers a verdict, which may include a finding of infringement (or not), injunctive relief (ordering one party to stop using the mark), and/or an award of damages or attorney’s fees.
7. Appeals and Post-Trial Settlement Opportunities
Even after a verdict, the process may not be over.
The losing party can appeal, especially if there’s a sizable judgment or fee award. Appeals can take a year or more—and while the appeal is pending, the parties often consider post-trial settlement.
Final Thoughts: Know What You’re Getting Into
Trademark litigation is serious. It’s expensive, time-consuming, and emotionally draining. From the day a complaint is filed to the final ruling, expect a timeline of 18 to 24 months—sometimes longer if appeals are involved.
Here’s what to remember:
- Be prepared to invest a minimum of $500,000 within six months of filing a complaint. If a case goes to trial, common legal costs are $1 to $2 million (or more).
- Damages are difficult to quantify, so litigation is often more about brand protection than financial recovery.
- Most cases settle, often after parties realize just how demanding the process is.
That said, litigation has its place—especially when early enforcement efforts fail. Once a lawsuit is filed, parties that previously ignored your cease and desist letter may take the matter much more seriously. And sometimes, filing a complaint is the only way to bring about the resolution you need to protect your brand.
If you have an infringement issue, contact our experienced attorneys for a consultation.
Josh Gerben, Esq.
Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.
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