Trademark Infringement: What to Do When Someone Uses Your Brand

Quick Links:

• What is trademark infringement?
• How to know your trademark is being infringed upon.
• How to respond trademark infringement.
• Do you need an attorney when reporting trademark infringement?
• How much does it cost to fight trademark infringement?
• What happens if you don’t enforce your trademark rights?
• How to protect against future infringement.

What is trademark infringement?

Trademark infringement occurs when someone uses your trademark—or a confusingly similar one—without permission and in a way that overlaps with the goods or services your trademark protects.

Under Section 43 of the Lanham Act, this includes using a trademark in a way that causes consumer confusion, marketplace deception, or misunderstanding about the source of goods or services.

Trademark infringement typically falls into two categories:

1. Another brand’s name or logo is confusingly similar to yours.
2. Another entity is using your identical name or logo to sell counterfeit products

Depending on the situation, various forms of legal action can be taken to resolve the infringement.

Examples of trademark infringement claims:

Starfall Education vs Universal Studios

Even major companies can face trademark issues.

Consider Universal Studios, which planned to launch a roller coaster called “Starfall Racers” to their fans.

Unfortunately, the name did not sit well with the educational company, “Starfall Education,” which filed a lawsuit, under the assumption that children would associate its brand with Universal’s thrill ride.

The suit forced Universal to use the name “Stardust Racers” instead, ending any future controversy.

This case illustrates why trademark clearance searches are crucial: infringement risks don’t require identical names or industries.

City of San Francisco vs City of Oakland Airport

Another trademark infringement example involves the City of Oakland renaming its airport to “San Francisco Bay Oakland International Airport.”

The City of San Francisco filed a lawsuit, claiming the new name violated its trademark rights and would confuse travelers into booking flights to the wrong airport. “Travelers will very likely be confused and book tickets to the unintended airport, thinking that the ‘San Francisco Bay Oakland International Airport’ is the San Francisco International Airport and arrive in the wrong place,” the lawsuit said.

While Oakland argued that the airport is legitimately located on the San Francisco Bay, the case remains unresolved.

The key issue in any trademark infringement claim is consumer confusion. If San Francisco can demonstrate that confusion is likely, they may prevail.

How to know if your trademark is being infringed upon

So now that you know what trademark infringement is, how do you recognize these matters so you can be sure to put an end to them?

The first step in addressing trademark infringement is identifying whether a violation of your rights is actually occurring.

Two important questions to consider:

1. How similar is the name or logo to your registered trademark?
2. How similar are the goods or services to yours?

The deciding factor is whether consumers are likely to be confused between your trademark and the infringing one.

A widely known example of two very similar trademarks coexisting without confusion is Delta, which is used by both the airline and the faucet company.

These marks are able to work simultaneously because of the natural separation of their industries. No one ever walks into a home improvement store thinking they can buy plane tickets, just like any traveler will not mistakenly purchase a sink while booking a flight.

Before taking action, ensure there’s a genuine risk of confusion involving goods or services similar to yours.

Burden of proof and trademark investigations

In some cases, uncovering infringement requires additional investigation. If a trademark owner is experiencing infringement, an attorney may recommend one or more of the following:

• Trademark infringement investigations: Identifies unauthorized use of a trademark.
• Trademark use investigations: Determines, how, where, and to what extent an infringer is using a trademark.
• Counterfeit investigations: Uncovers sales of gray market goods that occur outside authorized distribution channels.

How to respond to trademark infringement

If you suspect infringement, it’s important to respond strategically—not emotionally.

DO NOT reach out to the company or send angry messages through social media channels.

DO contact a trademark attorney.

An experienced trademark attorney can evaluate the scope of your rights and will guide you through the actions that are appropriate to your specific situation.

Typical enforcement steps include:

Step 1: Send a cease-and-desist letter.

Sending a cease and desist letter is often the first step in notifying the infringer of the situation and letting them know of your concerns.

These letters outline the infringement that has occurred and allow the trademark owner to demand action from an enforcement target. It also gives the parties a chance to consider resolving the dispute before additional legal action might become necessary.

Step 2: File take-down notices.

Online marketplaces like Amazon account for a large portion of the trademark infringement and counterfeiting that occurs in the marketplace today.

Most of these sites have trademark enforcement protocols for brand owners to report infringing products. However, these marketplaces are often dealing with thousands of these notices a day.

Whether it’s Amazon, eBay, Etsy, or even foreign wholesale marketplaces like Alibaba, an experienced attorney can help you create a customized enforcement plan for your budget. They can also help you avoid common pitfalls that cause delays in takedowns being processed and lost sales to infringers.

Step 3: File a Notice of Opposition with the USPTO.

Next, the infringement matter should be reported to the USPTO.

If the infringing mark has been submitted as a trademark application to the USPTO, you can file a Notice of Opposition against the mark during its thirty-day publication period.

Step 4: File a lawsuit.

If other measures fail, litigation may be necessary to protect your trademark rights.

While lawsuits are typically not the initial choice due to their length and cost, they are necessary if the original cease and desist letter is not acknowledged or settlement negotiations fail.

A trademark attorney can help to decide if your lawsuit is appropriate for state or federal court due to the scope of the infringement.

Do I need an attorney when reporting trademark infringement?

Even if you filed your trademark without assistance, an experienced attorney is essential when it comes to enforcement.

Legal counsel can:

• Evaluate your rights.
• Guide you through the enforcement process.
• Represent you in court or before the Trademark Trial and Appeal Board.

In cases of willful infringement, you may also be entitled to compensation for damages and attorney’s fees.

Ultimately, hiring an experienced trademark attorney will increase your chances of success in handling an infringement matter while also ensuring you are prepared to handle any roadblocks that may pop up along the way.

How much does it cost to fight trademark infringement?

Trademark litigation can be extremely expensive and is best viewed as a last resort.

While costs vary based on the complexity of the case and the infringer’s willingness to cooperate, defending or initiating a federal trademark infringement lawsuit can range from $50,000 to over $2,000,000. On average, the cost typically falls between $250,000 and $2,000,000. In most cases, clients cannot rely on recovering attorney’s fees or damages, even if successful.

Because of this, brand owners often explore non-litigation enforcement tools first, which are significantly more cost-effective and can still deliver meaningful results. These options include:

Cease-and-desist Letters | Average Cost: $2,000-$3,000
As stated above, the cease-and-desist letter is often the first step taken when addressing trademark infringement. When drafted with the right mix of legal authority and business practicality, these letters can prompt the infringer to voluntarily stop the use of the mark, rebrand, or enter into a coexistence agreement—without escalating the issue further.

Trademark Oppositions | Average Cost: $5,000-$10,000 if the case settles early; $50,000+ if the case goes to trial
A trademark opposition is filed during the application process to prevent a pending trademark from registering. If you believe a new application is confusingly similar to your existing trademark, you can file an opposition with the Trademark Trial and Appeal Board (TTAB). This is often a cost-effective first line of defense to stop a conflicting trademark before it reaches registration—without the need for full-blown litigation.

Trademark Cancellations | Average Cost: $5,000-$10,000 if the case settles early; $50,000+ if the case goes to trial
A cancellation proceeding is used to challenge a trademark that has already been registered. This could be appropriate if the mark is no longer in use, was obtained fraudulently, or conflicts with your rights. Cancellations can be filed at any time (in some cases) and provide a structured but lower-cost alternative to a federal lawsuit.

Expungement & Reexamination Proceedings | Average Cost: $5,000
Expungement and reexamination are newer proceedings created under the Trademark Modernization Act. These allow third parties to challenge trademark registrations based on nonuse:

• Expungement: Asserts that a trademark was never used in commerce for some or all of the listed goods/services.
• Reexamination: Claims that the mark wasn’t in use as of the relevant filing date.

Domain Name Disputes | Average Cost: $3,500
When someone registers a domain that is identical or confusingly similar to your trademark, a domain name dispute can be filed under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). These administrative proceedings are handled through organizations like WIPO or the Forum and can result in the offending domain being transferred or suspended. Domain disputes are particularly useful when dealing with cybersquatting or bad-faith domain registrations.

Take-down Notices | Average Cost: $500 per listing
Online infringement is increasingly common, but platforms like Amazon, Etsy, eBay, Instagram, and YouTube offer internal mechanisms for removing infringing listings or content. By submitting a take-down notice (often under the DMCA or the platform’s trademark complaint process), brand owners can request the removal of products or pages that misuse their trademarks. These notices are a powerful, cost-effective tool for dealing with counterfeiters, unauthorized sellers, or impersonators in digital marketplaces.

Letters of Protest | Average Cost: $2,000
A letter of protest is a pre-registration tool that allows third parties to submit evidence to the USPTO, when they believe a pending trademark application should be refused. The USPTO can then consider that evidence, such as prior registrations, generic use, or improper specimens during examination. This option allows rights holders to intervene quietly, without revealing their identity to the applicant, and potentially prevent a problematic trademark from being approved by the USPTO.

Settlement Discussions and Agreements| Average Cost: $5,000-$10,000
In many cases, parties can resolve disputes through creative settlement solutions that avoid court entirely. These may include:

• Amendments to language in trademark applications (e.g., narrowing descriptions of goods or services)
• Channel of trade restrictions (limiting how or where the mark is used or sold)
• Geographic restrictions (allowing coexistence in separate territories)
• Product/service expansion restrictions (agreeing not to expand into competing areas of use)

Taking a proactive, strategic approach to enforcement, while avoiding unnecessary litigation, helps protect brand value while keeping legal costs under control.

What happens if you don’t enforce your trademark rights?

A failure to enforce your trademark rights can have serious consequences:

Loss of Trademark Rights
Failing to enforce your trademark against infringers can weaken your legal rights over time since trademark rights are based on use and active enforcement.

Weakened Brand Image and Value
Trademarks are vital for maintaining a strong brand image and ensuring that consumers can identify your source of goods or services. Failure to enforce trademark rights could erode consumer trust and recognition, weakening the overall brand value.

Dilution
Trademark dilution occurs when a mark’s distinctiveness is weakened through unauthorized use by others, even when there isn’t direct competition or a likelihood of confusion. If a trademark owner doesn’t actively enforce their rights, the mark can become diluted.

Genericide
Failing to enforce trademark rights can lead to your mark becoming generic. This can happen when the public begins to use the trademark as the generic name for the type of product or service, rather than a brand identifier, think Kleenex or Xerox. Once a trademark becomes generic, it loses protection under trademark law.

Increased Infringement
Ignoring infringement can also lead to increased infringement of the trademark by others. When potential infringers notice that a trademark owner does not take action against misuse, they may be more likely to infringe with less of a fear of legal consequences.

How to protect against future infringement

As your business grows, it is important to consider additional trademark filings for new product names and logos as they are introduced. From time to time, you should also conduct an audit of your trademark portfolio to see what other elements of your branding should be protected.

Monitoring the USPTO and other countries’ trademark databases for new applications that are too similar to yours is also a crucial part of protecting yourself against future infringement matters. You can monitor the register yourself or invest in a trademark monitoring service.

You can also utilize tools such as Google Alerts to help you identify when new businesses and products using your name appear. Not only does that help you keep track of your growing industry, but it ensures that the marketplace does not become overly diluted.

Policing both the register and the marketplace will help to preserve your trademark’s distinctiveness and value.

Final thoughts

It is your responsibility as a trademark owner to monitor, enforce, and police your registered trademark(s). Failure to do so can lead to a narrowing of your rights within the mark.

If you’ve identified potential infringement, or want to proactively monitor and protect your trademarks, reach out to the attorneys at Gerben IP. We’ve helped businesses of all sizes navigate the enforcement process and safeguard the value of their brands.

Necessary Disclaimer:
Please note that this blog is not legal advice. It is for informational purposes only. Please contact your own attorney to discuss the particulars of your case.

• SHARE THIS ARTICLE ON:

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.