Can the Owner of a Registered Trademark Be Sued for Infringement?

By River Braun, J.D.

Can the Owner of a Registered Trademark Be Sued for Infringement?

By River Braun, J.D.

Someone with a registered trademark can in fact be sued for infringement. Such laws are designed to protect businesses from competitors' unethical and unfair business tactics. It prohibits a company from using a mark already in use in commerce for similar goods or services because doing so can cause consumer confusion and loss of goodwill that the trademark owner already enjoys.

Keyboard with one blue button labeled "trademark"

All business owners worry about whether someone can sue them. The brutal truth is that anyone can sue anyone at any time. The real question is whether the person initiating the lawsuit can actually win. In order to prevail in an infringement lawsuit against a registered owner, the plaintiff must be able to prove that they used the mark first in commerce and that the registered owner's infringement has caused them harm.

Creating Trademark Rights

It might be helpful to take a step back and understand how a business or individual actually obtains such protection. In the United States, it attaches to a mark in two ways: through common law or by federal register.

A business owner gains common law trademark protection when they use a mark in commerce for specific goods or services. For example, imagine you own a yoga studio in San Diego, California called Happy Baby, which you opened on June 6, 2017. Simply by using the Happy Baby mark in commerce—by opening your studio for business—you have obtained common law protection (at least in your geographic area) as long as no one else has used Happy Baby for their business.

Let's say you wanted to go the extra step and register it with the U.S. Patent and Trademark Office (USPTO). As part of that process, you would conduct a search to see whether anyone else uses that mark. If someone else in the yoga business uses your mark, you would not be able to register the mark because it would infringe on the other business's mark. Assuming no one else uses the Happy Baby mark, you can file your application for federal protections. As part of that application, you must state when your first use of that mark occurred.

In addition to proving you are the only business using the mark within your specific industry, you must also prove that your mark is not generic or merely descriptive. Trademarks must be unique—or in USPTO parlance, distinctive. This type of mark receives the highest degree of protection from the USPTO. If your mark is generic or merely describes your goods or services, such as Jill's Yoga Studio, then it would not be eligible for protection because its use would confuse consumers.

Defending a Registered Mark in a Lawsuit

If you are a registered trademark owner and someone sues you for infringement, they may assert that:

  • They had first use
  • Your mark is not distinctive enough to warrant protection
  • Your use of the mark causes consumer confusion
  • They experienced damages from your use of the mark

You can defend your position and your mark by showing that:

  • You truly did have an earlier use than the plaintiff
  • You've established brand recognition to overcome any assertion that your mark is not distinctive
  • No consumer confusion exists
  • The plaintiff cannot show damages

If you have a brand that you want to protect, the best way to do so is to obtain a federal trademark registration. You can review information on the USPTO website to help you protect your brand by registering your mark.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.