Guides · Trademark Litigation
Trademark Claims Under Federal and Texas Law
The core federal claims are infringement of a registered mark and false designation of origin for unregistered marks; both require a protectable mark and a likelihood of confusion.
· Law checked through October 20, 2026
In Short
The core federal claims are infringement of a registered mark and false designation of origin for unregistered marks; both require a protectable mark and a likelihood of confusion. Related claims cover false advertising, dilution of famous marks, cybersquatting, and counterfeiting. Texas adds claims for infringement of Texas-registered marks, dilution of marks famous in Texas, and common-law unfair competition.
Common situations.
- A competitor uses a confusingly similar name for the same services.
- A rival's ads make false claims about its own or a competitor's product.
- A famous brand's name appears on unrelated goods.
- A domain name copies a company's mark to divert traffic.
Federal claims.
| Claim | Statute | What must be shown |
|---|---|---|
| Infringement of a registered mark | 15 U.S.C. § 1114(1) | A legally protectable mark and a likelihood of confusion (Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527 (5th Cir. 2015)) |
| False designation of origin (unregistered marks and trade dress) | § 1125(a)(1)(A) | Same two elements; for unregistered trade dress, also nonfunctionality (§ 1125(a)(3)) |
| False advertising | § 1125(a)(1)(B) | A false or misleading statement of fact in commercial advertising that deceives or tends to deceive a substantial segment of the audience, is material, is in interstate commerce, and injures the plaintiff (Pizza Hut, Inc. v. Papa John's Int'l, Inc., 227 F.3d 489 (5th Cir. 2000)). The plaintiff must have a commercial injury to reputation or sales proximately caused by the deception (Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014)) |
| Dilution | § 1125(c) | A famous mark, meaning one widely recognized by the general consuming public of the United States, and a later use likely to cause dilution by blurring or tarnishment, regardless of confusion or competition |
| Cybersquatting | § 1125(d) | Registering, trafficking in, or using a domain name identical or confusingly similar to a distinctive mark (or dilutive of a famous one) with bad-faith intent to profit |
| Counterfeiting | §§ 1114, 1116(d), 1117(b)-(c) | Use of a spurious mark identical with, or substantially indistinguishable from, a registered mark (§ 1127), on the goods or services for which it is registered |
Secondary liability. A manufacturer or distributor that intentionally induces another to infringe, or continues supplying a product to one it knows or has reason to know is infringing, is contributorily liable (Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982)).
Reach. The Lanham Act's infringement provisions apply only to use in commerce in the United States, not to foreign sales (Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412 (2023)).
Texas claims.
| Claim | Source | Notes |
|---|---|---|
| Infringement of a Texas-registered mark | Tex. Bus. & Com. Code § 16.102 | Requires a Texas registration; remedies in § 16.104 |
| Texas dilution | § 16.103 | For marks famous in Texas or in a geographic area of Texas, so a regional brand may qualify even if it is not famous nationally |
| Common-law trademark infringement and unfair competition | Texas common law | Generally analyzed like Lanham Act claims, using likelihood of confusion |
Texas and federal claims are often brought together. Federal courts hear the Texas claims as supplemental or related claims (28 U.S.C. §§ 1338(b), 1367).
Choosing claims.
- Plead § 1114 only for registered marks, and plead § 1125(a) for unregistered marks, trade dress, and marks used beyond the registration's goods.
- Dilution is hard to prove federally because few marks meet the national fame standard; the Texas statute's regional standard may be easier for a well-known Texas brand.
- False advertising requires proof about the content of the message and its effect on buyers, often through surveys.
- Counterfeiting claims unlock seizure, mandatory trebling, and statutory damages, but only for registered marks on the same goods. See Trademark Remedies.
Sources.
- 15 U.S.C. §§ 1114, 1116, 1117, 1125, 1127.
- 28 U.S.C. §§ 1338(b), 1367.
- Tex. Bus. & Com. Code §§ 16.102-16.104.
- Nola Spice Designs, L.L.C. v. Haydel Enters., Inc., 783 F.3d 527 (5th Cir. 2015).
- Pizza Hut, Inc. v. Papa John's Int'l, Inc., 227 F.3d 489 (5th Cir. 2000).
- Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014).
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982).
- Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412 (2023).
This guide is general information, not legal advice. Law checked through October 20, 2026. See the Disclaimer.