Guides ยท Trademark Litigation
From Discovery Through Trial
A trademark case is won on evidence of how buyers see the marks: how each party chose and used its mark, where the products are sold, whether real customers have been confused, and what surveys show.
· Law checked through October 21, 2026
In Short
In the Fifth Circuit, likelihood of confusion is usually a question of fact, so summary judgment is granted only when the record compels one answer, and many contested cases go to a jury. Surveys are common, and their flaws usually affect their weight rather than whether they come in.
Common situations.
- A defendant's founder is asked in a deposition how the company chose its name.
- A brand owner collects misdirected emails and calls as evidence of confusion.
- Each side hires a survey expert, and each moves to exclude the other's survey.
- A defendant moves for summary judgment, arguing that the marks are too different to confuse anyone.
What each side looks for in discovery.
| Topic | The owner seeks | The defendant seeks |
|---|---|---|
| Adoption and intent | How the defendant chose its mark, its clearance searches, and when it learned of the owner's mark | The owner's own clearance and adoption, and any knowledge of earlier users |
| Strength of the mark | Advertising spending, sales, unsolicited media coverage | Third-party uses and registrations of similar marks |
| Confusion | Misdirected orders, calls, emails, reviews, and social media posts | The absence of confusion during years of coexistence |
| Channels and buyers | Overlap in stores, websites, and customers | Differences in price, buyers, and how purchases are made |
| Money | The defendant's sales and costs, for a profits award | The owner's lost sales, if any, and the cause of any decline |
| Rights | Registrations and maintenance filings | Gaps in use, licenses without quality control, and delay in enforcement |
Sales and cost data usually is produced under a protective order limiting who may see it (Fed. R. Civ. P. 26(c)). A party that relies on an attorney's clearance opinion to show good faith should expect the other side to seek the communications behind that opinion.
Surveys.
| Survey | What it measures | Typical use |
|---|---|---|
| Eveready | Whether respondents shown the defendant's product name the owner as its source | Strong, well-known marks |
| Squirt | Whether respondents shown both products believe they come from the same source | Products sold side by side |
| Secondary meaning | Whether buyers associate a descriptive mark or trade dress with one source | Unregistered descriptive marks and trade dress |
| Genericness | Whether buyers understand a term as a brand or as the name of the product | Genericness defenses |
In the Fifth Circuit, a survey is admissible if it is pertinent and conducted according to accepted principles, and methodological flaws usually bear on its weight rather than its admissibility. Serious flaws, such as surveying the wrong group of people, can make reliance on a survey unreasonable (Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004)). Survey and damages experts are also subject to Rule 702, which since December 1, 2023, has required the proponent to show that expert testimony more likely than not meets its reliability standards (Fed. R. Evid. 702). See Summary Judgment, Experts, and Daubert, in the patent section.
Summary judgment.
Likelihood of confusion is typically a question of fact, but summary judgment is proper if the record compels a conclusion one way (Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009)). In Xtreme Lashes, the Fifth Circuit reversed a summary judgment for the defendant because the evidence of confusion left a genuine dispute for a jury. Other issues that may be decided on summary judgment include:
- whether a descriptive mark has acquired secondary meaning;
- genericness and functionality;
- descriptive or nominative fair use;
- whether a mark is famous enough for a dilution claim; and
- laches and limits on monetary relief.
See Defenses in Trademark Cases.
Trial.
- Jury. A party seeking damages may demand a jury. Juries decide likelihood of confusion and other fact questions, including whether a party may tack its use of an earlier mark onto a later one (Hana Fin., Inc. v. Hana Bank, 574 U.S. 418 (2015)).
- Judge. The judge decides injunctions, attorney's fees, and equitable defenses. See Trademark Remedies.
- Instructions. Federal courts in Texas draw on the Fifth Circuit's pattern jury instructions for trademark claims (Pattern Jury Instructions (Civil Cases), ch. 14 (2024)).
- Evidence at trial. Testimony from confused customers, survey experts, and witnesses on how the mark was chosen. Isolated instances of confusion count for less when set against large sales. See Likelihood of Confusion in the Fifth Circuit.
- After the verdict. Motions for judgment as a matter of law and for a new trial follow the same rules as in other federal cases (Fed. R. Civ. P. 50, 59). See Appeals in Trademark Cases.
Texas state court.
Trademark cases in Texas district courts follow the Texas Rules of Civil Procedure for discovery, summary judgment, and trial. Texas claims, such as infringement of a Texas-registered mark, are generally analyzed like their federal counterparts. See Trademark Claims Under Federal and Texas Law.
Sources.
- Fed. R. Civ. P. 26(c), 50, 56, 59.
- Fed. R. Evid. 702 (as amended Dec. 1, 2023).
- Fifth Circuit Pattern Jury Instructions (Civil Cases), ch. 14 (2024).
- Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004).
- Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009).
- Hana Fin., Inc. v. Hana Bank, 574 U.S. 418 (2015).
This guide is general information, not legal advice. Law checked through October 21, 2026. See the Disclaimer.