Texas IP Law

IP Topics

Trademark Litigation in Texas.

Trademark disputes can be heard in federal court, in Texas state court, or, for registration questions only, at the Trademark Trial and Appeal Board.

· Law checked through October 20, 2026

In Short

Trademark disputes can be heard in federal court, in Texas state court, or, for registration questions only, at the Trademark Trial and Appeal Board. Most infringement claims turn on whether consumers are likely to be confused, which federal courts in Texas decide using the Fifth Circuit's "digits of confusion." Remedies range from an injunction to the defendant's profits and, for counterfeits, statutory damages of up to $2 million per mark per type of goods.

Common situations.

  • A competitor opens under a similar name in the same city.
  • Counterfeit versions of a product appear on an online marketplace.
  • A business receives a cease-and-desist letter about its name or logo.
  • A competitor opposes a company's application at the Patent and Trademark Office.

Where trademark disputes go.

Forum What it decides Notes
Federal district courtInfringement, unfair competition, dilution, cybersquatting, counterfeiting; registration ordersMost Texas trademark suits; appeals to the Fifth Circuit (15 U.S.C. § 1121; 28 U.S.C. § 1338)
Texas state courtLanham Act claims (shared jurisdiction) and Texas claims, such as infringement of a Texas-registered markTex. Bus. & Com. Code §§ 16.102-16.104
Trademark Trial and Appeal BoardOppositions and cancellations: whether a mark may be registered or stay registeredNo damages and no injunctions; review by the Federal Circuit or a district court (15 U.S.C. § 1071)
International Trade CommissionImports that infringe a registered mark or trade dressExclusion orders (19 U.S.C. § 1337)
U.S. Customs and Border ProtectionSeizure of counterfeit imports of recorded marksAdministrative, not litigation

The Texas Business Court's new IP jurisdiction (Tex. Gov't Code § 25A.004(d)(5)) covers trade secrets and certain software, data, and life-science IP disputes over $5 million. It does not cover trademark disputes generally.

The Process

How a trademark case unfolds.

  1. Investigation and demand.

    Clearance records, evidence of use and confusion, and a cease-and-desist letter.

  2. Response or negotiation.

    Coexistence, rebranding, or a declaratory judgment suit.

  3. Filing and emergency relief.

    A TRO or preliminary injunction, aided by a statutory presumption of irreparable harm (15 U.S.C. § 1116(a)); for counterfeits, possible ex parte seizure.

  4. Discovery.

    Sales and marketing records, evidence of actual confusion, and consumer surveys.

  5. Summary judgment and trial.

    Likelihood of confusion is a question of fact in the Fifth Circuit, so it often goes to a jury.

  6. Remedies and appeal.

    Injunction, profits, damages, fees in exceptional cases; appeal to the Fifth Circuit.

The digits of confusion.

Fifth Circuit courts weigh these factors, none of which is decisive (Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998)):

  1. The type (strength) of the mark.
  2. Similarity of the marks.
  3. Similarity of the products or services.
  4. Identity of retail outlets and purchasers.
  5. Identity of advertising media.
  6. The defendant's intent.
  7. Evidence of actual confusion.
  8. The degree of care purchasers exercise.

Recent developments.

  • Who decides mark strength. On June 29, 2026, the Supreme Court agreed to decide whether trademark strength is a question of fact in the likelihood-of-confusion analysis (RiseandShine Corp. v. PepsiCo, Inc., No. 24-1016). The case comes from the Second Circuit, which treats strength as a legal question. Briefing is under way.
  • Profits only from the named defendant. A court awarding the defendant's profits may count only the profits of the defendant actually sued, not those of its unsued corporate affiliates (Dewberry Grp., Inc. v. Dewberry Eng'rs Inc., 604 U.S. ___ (Feb. 26, 2025)).
  • Parody used as a brand. When an accused infringer uses another's mark as its own source identifier, even in parody, the special First Amendment test for expressive works does not apply (Jack Daniel's Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023)).
  • Foreign conduct. The Lanham Act reaches only infringing use in commerce in the United States (Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412 (2023)).
  • Higher USPTO fees. Since January 18, 2025, a federal application costs $350 per class, with surcharges for custom descriptions of goods.

Guides in this section.

Part I. Rights that can be enforced

Part II. The claims

Part III. Proof and defenses

Part IV. The process

  • Before Filing, and Responding to a Demand
  • TTAB Oppositions and Cancellations
  • Where Trademark Cases Are Heard
  • Emergency Relief: TROs, Preliminary Injunctions, and Seizures
  • From Discovery Through Trial
  • Trademark Remedies
  • Appeals in Trademark Cases
  • Counterfeits and Online Marketplaces

Quick references.

Sources.

  • 15 U.S.C. §§ 1071, 1116, 1117, 1121.
  • 28 U.S.C. § 1338.
  • 19 U.S.C. § 1337.
  • Tex. Bus. & Com. Code §§ 16.102-16.104.
  • Tex. Gov't Code § 25A.004(d)(5).
  • Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998).
  • RiseandShine Corp. v. PepsiCo, Inc., No. 24-1016 (U.S. cert. granted June 29, 2026).
  • 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).
  • Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412 (2023).
  • USPTO trademark fee schedule (effective Jan. 18, 2025).

Related reading.