Trademark Litigation Questions

Do I need a federal registration to sue?

No. Unregistered marks are protected against confusingly similar uses under the Lanham Act (15 U.S.C. § 1125(a)) and Texas common law. But registration helps: it is evidence of validity and ownership (§§ 1057(b), 1115(a)), gives nationwide notice of the claim of ownership (§ 1072), can become incontestable after five years of continuous use (§§ 1065, 1115(b)), is required for statutory damages against counterfeiters (§ 1117(c)), and lets the owner record the mark with U.S. Customs and Border Protection. See Which Trademark Rights Can Be Enforced.

Who owns a name: the first to use it or the first to register it?

In the United States, rights come from use. A federal application, once it matures to registration, gives nationwide priority as of its filing date (§ 1057(c)), but an earlier user may keep rights in the area where it used the mark first.

What does "likelihood of confusion" mean?

Whether an appreciable number of ordinary buyers are likely to be confused about the source, sponsorship, or affiliation of the goods or services. Fifth Circuit courts weigh eight "digits of confusion," including the strength and similarity of the marks, the relatedness of the products, and any actual confusion. See Likelihood of Confusion in the Fifth Circuit.

Can I stop someone using a similar name in a different industry?

Usually not, unless buyers would think the businesses are connected. A famous mark is protected against dilution even without confusion (§ 1125(c)), and a mark famous in Texas, or part of Texas, has similar protection under state law (Tex. Bus. & Com. Code § 16.103).

Is a Texas registration worth having?

It supports claims under Texas law, including infringement of a Texas-registered mark (§ 16.102) with remedies that include profits, damages, and up to three times those amounts in some cases (§ 16.104). It does not give nationwide rights.

How long do I have to sue?

The Lanham Act has no statute of limitations. Delay is judged under laches, which asks whether the owner unreasonably delayed after it knew or should have known of the infringement and whether the delay prejudiced the defendant. An unpublished Fifth Circuit decision used Texas's four-year limitations period for fraud as the reference point (Jaso v. The Coca Cola Co., No. 10-20786 (5th Cir. Aug. 1, 2011) (per curiam)). See Defenses in Trademark Cases.

I received a cease-and-desist letter. What now?

See Responding to a Trademark Claim.

Can I get an injunction quickly?

Possibly. Since December 27, 2020, a trademark owner that shows infringement, or a likelihood of success on the merits in seeking a preliminary injunction, is entitled to a rebuttable presumption of irreparable harm (§ 1116(a)). Long delay in seeking relief can rebut it. See Emergency Relief: TROs, Preliminary Injunctions, and Seizures.

What can I recover?

An injunction; the defendant's profits, the owner's damages, and costs (§ 1117(a)); and attorney's fees in exceptional cases. Profits are limited to those of the named defendant (Dewberry Grp., Inc. v. Dewberry Eng'rs Inc., 604 U.S. ___ (2025)). Counterfeiting brings mandatory trebling in most cases (§ 1117(b)) or statutory damages of $1,000 to $200,000 per counterfeit mark per type of goods, up to $2,000,000 if willful (§ 1117(c)). See Trademark Remedies.

Is parody protected?

Sometimes. A parody that is not used as a brand may be protected as expression. But when a parody uses another's mark as its own trademark, ordinary likelihood-of-confusion analysis applies (Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023)).

Someone registered a domain name using my mark. What can I do?

File a complaint under the Uniform Domain-Name Dispute-Resolution Policy, a fast administrative process that can transfer the domain, or sue under the Anticybersquatting Consumer Protection Act, which requires bad-faith intent to profit (§ 1125(d)) and allows statutory damages of $1,000 to $100,000 per domain name (§ 1117(d)).

Someone opposed my trademark application. Is that a lawsuit?

It is an administrative proceeding before the Trademark Trial and Appeal Board. The Board decides only whether the mark may be registered; it cannot award damages or order a business to stop using a mark. An opposition must be filed within 30 days after the mark is published, with extensions available (§ 1063(a)). See TTAB Oppositions and Cancellations.

Does a judge or a jury decide whether confusion is likely?

In the Fifth Circuit, likelihood of confusion is a question of fact, often decided by a jury. The Supreme Court will decide in RiseandShine Corp. v. PepsiCo, Inc., No. 24-1016 (cert. granted June 29, 2026), whether the strength of a mark, one part of that analysis, is a question of fact.

Sources.

• 15 U.S.C. §§ 1057, 1063, 1065, 1072, 1115, 1116, 1117, 1125.
• Tex. Bus. & Com. Code §§ 16.102-16.104.
• Jaso v. The Coca Cola Co., No. 10-20786 (5th Cir. Aug. 1, 2011) (per curiam) (unpublished).
• Dewberry Grp., Inc. v. Dewberry Eng'rs Inc., 604 U.S. ___ (Feb. 26, 2025).
• Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023).
• RiseandShine Corp. v. PepsiCo, Inc., No. 24-1016 (U.S. cert. granted June 29, 2026).

This guide is general information, not legal advice. Law checked through October 20, 2026. See the Disclaimer.