A trademark is a valuable asset for any business, whether it’s a name, a logo, or a slogan. It builds brand recognition and goodwill with customers. But what happens when another business accuses you of infringing on their trademark? Receiving a cease-and-desist letter or, even more seriously, a lawsuit can be a frightening experience. It can disrupt your operations, damage your reputation, and threaten your bottom line.

The process can seem confusing, especially given Michigan’s unique legal landscape. If your Bloomfield Hills business is facing a trademark infringement claim, you need to understand your rights and legal options. Our legal team can help you confront this problem and walk away with as favorable results as possible.

Understanding Trademark Law in Michigan

Trademark disputes can be complex because they often involve both federal and state laws. Federal trademark law, primarily the Lanham Act, governs trademarks used in interstate commerce. However, Michigan also has its own trademark statutes under the Michigan Compiled Laws (MCL). This is particularly relevant for businesses that operate only within the state’s borders.

The Michigan Trademark Act, MCL § 429.31 et seq., provides a framework for registering and protecting trademarks within the state. It defines a trademark as a “word, name, symbol, or device” that identifies and distinguishes a person’s goods or services from others. A key part of the law is preventing the registration of a mark that is “likely, when applied to the goods or services of the applicant, to cause confusion, mistake, or to deceive.” This “likelihood of confusion” standard is central to most trademark claims, whether filed in federal or state court.

Common Claims in a Trademark Lawsuit

A business suing you for trademark infringement will have to prove several things. First, they must show they own a valid trademark, which could be a federally registered mark, a state-registered mark, or even an unregistered mark they have established through use in commerce.

Second, they must demonstrate that you are using a mark that is likely to cause confusion among consumers about the source of your goods or services. Courts consider several factors when evaluating the likelihood of confusion. These can include the similarity of the marks, the similarity of the goods or services, the marketing channels used, and the level of consumer sophistication.

They may also allege trademark dilution, which is when a famous mark’s distinctiveness is weakened by another party’s use of a similar mark. Unlike infringement, dilution does not require a showing of consumer confusion.

How to Respond to a Trademark Lawsuit

If you are served with a summons and complaint, you have a limited amount of time to respond. Failing to act quickly can result in a default judgment against you, which means the other party wins automatically. Your first step should be to consult with an attorney who understands Michigan business and trademark law.

Your attorney will help you file an “Answer” to the complaint. In your answer, you can deny the allegations and raise what are known as “affirmative defenses.” These are legal arguments that, even if the plaintiff’s claims are true, give you a reason to win the case.

Key Defenses to a Trademark Violation Claim

When defending your business, several legal strategies may be available. The specific defense depends on the facts of your case and the type of claim brought against you.

1. You Are Not Using the Mark in a Confusing Manner

This is the most direct defense to a trademark infringement claim. You can argue that your mark is not similar enough to the plaintiff’s mark or that the goods or services are so different that no reasonable consumer would be confused.

2. Fair Use

This defense argues that you are using the plaintiff’s mark not as your own brand, but for a legitimate, non-trademark purpose.

There are two main types of fair use:

  • Classic Fair Use: This applies when you use a descriptive term from the plaintiff’s trademark to describe your own goods or services. For instance, if your business sells apple cider, you could use the word “apple” to describe your product, even if another company has a trademark on the word “Apple” for computers
  • Nominative Fair Use: This defense applies when you use another’s trademark to refer to the trademark owner’s actual goods or services. A car mechanic who advertises that they repair “Ford” vehicles is using the “Ford” mark to identify the cars, not to suggest they are part of the Ford Motor Company

3. The Plaintiff’s Mark is Not Valid

You can challenge the validity of the plaintiff’s mark. This may be a complex legal argument.

Possible grounds for this include:

  • The mark is merely descriptive or generic and should not have been registered. For example, a court might find that a trademark on “The Law Firm” is too generic to be protected
  • The plaintiff abandoned the mark by discontinuing its use for two or more consecutive years
  • The plaintiff does not have priority, meaning they were not the first to use the mark in commerce. Trademark rights are generally based on who used the mark first, not who registered it first

4. The Plaintiff is Barred by Laches or Estoppel

Laches and estoppel are equitable defenses. Laches may apply if the plaintiff waited too long to sue you after they knew or should have known about your use of the mark, and this delay caused you harm. Estoppel may apply if the plaintiff made statements or took actions that led you to believe your use of the mark was acceptable.

Preparing for Your Defense

A strong defense requires careful preparation and an in-depth understanding of the law. You should gather all relevant documents, including any cease-and-desist letters, correspondence with the plaintiff, and marketing materials showing your use of the mark. You should also analyze the plaintiff’s mark and how it is used in the marketplace.

The legal process for a trademark lawsuit involves more than just filing an answer. It can include discovery, where both sides exchange information, and potentially, a trial. Having a knowledgeable legal team by your side is essential for navigating these steps.

Protecting Your Business and Brand

Facing a legal challenge like a trademark lawsuit is a serious matter. We understand the stress and uncertainty it can cause for business owners in Bloomfield Hills and beyond. It is not something you have to handle alone. Our team at Kendal Law Group PC can help you assess your situation, understand your legal options, and build a defense tailored to your unique circumstances.

We have extensive experience in commercial litigation, including trademarks and copyrights. We work to help our clients solve their legal issues in a timely and cost-effective manner. If you have been served with a trademark violation lawsuit, call us at 248-609-1718 to schedule a free case evaluation.