Defending Trademark and Unfair Competition Claims
Defensa contra reclamaciones de marcas y competencia desleal.
If you have been sued, threatened, or had your marketplace account frozen, the first days matter most. We defend businesses against federal and Florida trademark, trade dress, dilution, false advertising, FDUTPA, and unfair competition claims, and sellers caught in Schedule A cases. Start with your deadline, then find the page for the claim against you.
Bringing a claim instead?Litigation Overview →
- Calendar the deadline. Find the date you were served (or the date on the letter) and count the days: generally 21 in federal court, 20 in Florida state court.
- Preserve documents. Keep listings, ads, sales and sourcing records, emails, and messages. Do not delete posts or products; see Preservation Notices.
- Notify your insurer. Many business policies cover "personal and advertising injury." Give prompt written notice and send the complaint.
- Do not contact the plaintiff or its lawyers, and do not change your branding, listings, or website until you have advice.
- Send us the papers. Upload the complaint or demand; we review it the same business day after a conflict check.
Eight defense pages, one for each claim
Most complaints combine several of these counts. Each page explains what the plaintiff must prove, the defenses that apply, how the response unfolds, and what is at stake.
Trademark Infringement Defense
Likelihood of confusion, invalid or abandoned marks, prior use, fair use, delay, and first sale. Also covers Florida registration and common-law counts.
§ 43(a)Trade Dress Defense
Functionality, no secondary meaning for product design, vague definitions of the dress, and labeling that dispels confusion.
§ 43(a)(1)(A)False Designation of Origin Defense
No protectable mark or priority, no confusion, Dastar limits on "origin", and Abitron limits on foreign conduct.
§ 43(c) · § 495.151Dilution Defense
The mark is not famous enough, statutory exclusions, no blurring or tarnishment, and the willfulness bar to money.
§ 43(a)(1)(B)False Advertising Defense
Truth and puffery, not commercial advertising, materiality, Lexmark standing, survey challenges, and the NAD option.
§ 501.204FDUTPA Defense
Actual damages, exemptions, non-consumer standing, Rule 9(b), and prevailing-party fees that can run against the plaintiff.
Rule 20 · Rule 65Schedule A Disputes
Frozen marketplace accounts in multi-defendant cases: joinder, jurisdiction, over-broad freezes, bonds, and settlement.
§ 1125(a) · § 1125(d)Federal Unfair Competition Defense
No protectable rights, no confusion, Dastar, Abitron, and cybersquatting counts. A weak infringement count usually takes this one with it.
Sued under Florida's trademark statute or Florida common law? Those counts usually ride with a federal claim, and our Trademark Infringement Defense page covers them.
Your deadline depends on the paper in your hand
A letter, a lawsuit, and a marketplace freeze each start a different clock. Find your row, calendar the date, and send it to us.
| You received | Deadline | First move | Where to start |
|---|---|---|---|
| A cease and desist letter | None set by law; the letter may name one | Read it, preserve, and do not reply on your own | Responding to a Cease and Desist |
| A demand for money | Usually the date in the letter | Test the numbers before any offer | Responding to a Demand Letter |
| A federal complaint and summons | 21 days after service; 60 days if you signed a waiver of service (90 if the request went abroad) | Calendar it; answer, move to dismiss, or get a stipulated extension | The claim pages above |
| A Florida state-court complaint | 20 days after service | Calendar it; consider removal to federal court within 30 days | The claim pages above |
| A marketplace freeze or Schedule A notice | Often short; the TRO hearing or answer date runs from email service | Find the case number and court; preserve sales records | Schedule A Disputes |
| A TTAB opposition or cancellation | The answer date set in the Board's notice | Docket it; check whether a court case is coming | Send us the notice |
General rules only. Court orders, the method of service, and extensions can change your date. Fed. R. Civ. P. 4(d), 12(a); Fla. R. Civ. P. 1.140(a); 28 U.S.C. § 1446(b).
From service to resolution
Timing varies by court and judge. Many cases resolve after the injunction ruling, after key depositions, or at mediation.
- Days 1–2TriageCalendar the deadline, preserve evidence, notify your insurer, and send us the papers. We run a conflict check and review the complaint the same business day.
- Week 1Assess the claimWe pull the plaintiff's registrations and file histories, check use and priority, and look for the defenses that end cases early: no protectable mark, no confusion, functionality, Dastar, or lack of jurisdiction.
- By the deadlineAnswer or move to dismissA Rule 12(b) motion can challenge jurisdiction, venue, service, or a complaint that fails to state a claim, and it suspends the time to answer until 14 days after the ruling. Some defenses are waived if left out of the first response.
- EarlyInjunction hearingIf the plaintiff seeks a TRO or preliminary injunction, the case can turn in weeks. We prepare evidence on confusion, harm, and the balance of hardships, and press for an adequate bond.
- Months 2–4Counterclaims and strategyCancellation of the plaintiff's registration, declaratory judgment, or claims of your own. Mediation is required in many Florida federal cases (S.D. Fla. Local Rule 16.2).
- Months 3–12Discovery and expertsDocuments, depositions, sales and profit data, and confusion or materiality surveys on both sides.
- LaterSummary judgment, trial, appealMany defenses are decided on summary judgment. Appeals from Florida federal courts go to the Eleventh Circuit.
Defenses that recur across trademark cases
Each claim page applies these to its own elements. Which ones fit depends on the plaintiff's rights, your use, and the timeline.
No likelihood of confusion
The central question in infringement, trade dress, false designation, and unfair competition cases. The Eleventh Circuit weighs seven factors, and actual confusion and the strength of the mark weigh most.
Frehling (11th Cir. 1999)The plaintiff's mark is not valid
Generic, merely descriptive without secondary meaning, abandoned, or registered by fraud. Some challenges remain even against an incontestable registration.
15 U.S.C. §§ 1064, 1115, 1119You were there first
Prior use in your area can give you rights the plaintiff's later registration does not erase, at least where you used the mark before the plaintiff's filing.
15 U.S.C. § 1115(b)(5)Fair use and expressive use
Using words in their ordinary descriptive sense, or naming another company's product to describe your own, may be fair use. Parody gets less protection when it is used as your own brand.
KP Permanent (2004); Jack Daniel's (2023)Functionality
Features that are essential to use or purpose, or that affect cost or quality, cannot be protected as trade dress. For unregistered trade dress the plaintiff must prove non-functionality.
TrafFix (2001); § 1125(a)(3)Limits on the Lanham Act
"Origin" means who made the goods, not who created the ideas in them, and the Act reaches only infringing use in U.S. commerce.
Dastar (2003); Abitron (2023)Delay
A plaintiff who waited too long may lose money remedies, and sometimes an injunction. Courts in the Eleventh Circuit borrow Florida's four-year period as a guide.
LachesFees can cut both ways
Lanham Act fees go to the prevailing party in exceptional cases. Under Chapter 495 and FDUTPA, a court may award fees to a defendant who prevails.
Octane (2014); Fla. Stat. §§ 495.141, 501.2105Settlement is a business decision
Not every case should be fought to judgment. Early options include a coexistence agreement that separates the parties' markets, a phase-out period for a new brand, a license, a consent judgment, or a dismissal in exchange for limited changes. We measure every offer against realistic exposure: the profits at issue, the cost of rebranding, insurance, and fee risk. See Damages Evaluations.
A strong defense also shapes the settlement. A pending cancellation counterclaim, a functionality challenge, or a motion to dismiss for lack of jurisdiction can change what the plaintiff will accept.
Five mistakes defendants make in the first weeks
Letting the deadline pass while talking settlement
Negotiations do not stop the clock, and a default can lead to an injunction and a money judgment entered without your side of the story.
Rule 55Respond on time or file a stipulated extension.
Rebranding, deleting listings, or taking down pages
A sudden change can look like an admission, and deleting evidence after a dispute begins can lead to sanctions.
PreservationFreeze the record first; plan any change with counsel.
Calling the plaintiff or its lawyers yourself
What you say can be quoted back in a declaration, and admissions about intent or sales are hard to undo.
AdmissionsLet counsel make the first contact.
Not telling the insurer
Late notice can cost coverage. Policies differ, and some cover trade dress or slogan claims even when they exclude trademark claims.
CoverageGive written notice at once and send the complaint.
Leaving out defenses and counterclaims
Some defenses are waived if not raised in the first response, and some counterclaims are compulsory.
Rules 8(c), 12(h), 13(a)Review the full list before filing.
Our defense team
Robert H. Thornburg leads our Lanham Act litigation. Susan J. Latham defends trade dress, dilution, false advertising, and copyright claims. James R. Leahy handles e-commerce, technology, and marketplace disputes, including Schedule A cases, and Melissa Dangond Crews handles TTAB proceedings and works with Spanish-speaking clients.
We defend cases in the Southern, Middle, and Northern Districts of Florida and in Florida circuit courts, and work with local counsel when a case is filed elsewhere. We work in English and Spanish.
Our Litigation pages cover the same claims from the plaintiff's side, and Cease and Desist Letters covers enforcement before suit.
Defending is not only saying no
A defense can change the balance of a case. These are the tools we consider at the start, because some must be raised with the answer.
Cancel the plaintiff's registration
A court can order cancellation of a registration that is generic, descriptive without secondary meaning, functional, abandoned, or obtained by fraud. It changes the plaintiff's risk.
15 U.S.C. § 1119Ask for a declaratory judgment
A counterclaim that you do not infringe keeps the issue before the court even if the plaintiff later drops its case.
28 U.S.C. § 2201Seek fees in an exceptional case
A case that is weak on the merits or litigated unreasonably can be "exceptional," allowing a fee award to the defendant.
Octane (2014); Tobinick (11th Cir. 2018)Use Florida fee statutes
When the plaintiff adds Chapter 495 or FDUTPA counts, the court may award fees to a defendant who prevails on them.
Fla. Stat. §§ 495.141, 501.2105Bring your own claims
The plaintiff's own advertising, use, or conduct toward your customers may support claims of your own.
Rule 13Frequently asked questions
I was just served. What is my deadline?
In federal court an answer or motion is generally due 21 days after service, or 60 days after the request was sent if you signed a waiver of service (90 if it was sent outside the United States). In Florida state court it is generally 20 days. Court orders and extensions can change the date, so send us the papers and the date you were served.
Can I get more time to respond?
Often, yes. The plaintiff's counsel commonly agrees to a short extension, which should be filed with the court. Do not assume an informal agreement protects you from a default.
Should I contact the plaintiff to explain?
Not yourself. Statements you make can be used as evidence of intent or confusion. Let counsel make the first contact, after we have reviewed the complaint and the plaintiff's rights.
Should I stop using the name or take down my listings?
Not before getting advice. Deleting pages or listings can destroy evidence you are required to keep, and a sudden change can look like an admission. If a change makes business sense, we plan it so it does not hurt your defense.
Will my insurance cover a trademark lawsuit?
Sometimes. Many general liability policies cover "personal and advertising injury," which can include trade dress or slogan claims, although many exclude trademark infringement. Give your insurer written notice promptly and send the complaint.
Can I be personally liable as an owner or officer?
Yes. An individual who actively takes part in the infringing conduct can be named and held liable along with the company.
My marketplace funds were frozen and I have not been served. What happened?
You may be a defendant in a "Schedule A" case, where a brand owner sues many sellers at once and obtains a sealed asset freeze before notifying them. See Schedule A Disputes.
Do you defend cases filed outside Florida?
We defend cases in Florida's federal and state courts. When a case is filed elsewhere, we appear where we are admitted or permitted pro hac vice and work with local counsel where the court requires it.
Upload the complaint
Send the complaint or demand, the date you were served, and any letters exchanged. We run a conflict check and review it the same business day. Sending documents does not create an attorney-client relationship.
- Same-day review after a conflict check
- Deadline calendaring and extensions
- Motions to dismiss, answers, and counterclaims
- Settlement, coexistence, and trial
Prefer to talk first? Call or email, or message us on WhatsApp. Atendemos en español.
- Fed. R. Civ. P. 12, Defenses and objections (Cornell LII)
- Fed. R. Civ. P. 4, Summons; waiver of service (Cornell LII)
- 28 U.S.C. § 1446, Procedure for removal (Cornell LII)
- Fla. R. Civ. P. 1.140 (The Florida Bar, Rules of Civil Procedure)
- 15 U.S.C. § 1119, Power of court over registration (Cornell LII)
- 15 U.S.C. § 1115, Registration as evidence; defenses (Cornell LII)
- 15 U.S.C. § 1125 (Cornell LII)
- Frehling Enterprises v. International Select Group, 192 F.3d 1330 (11th Cir. 1999)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)
- Abitron Austria GmbH v. Hetronic International, 600 U.S. 412 (2023)
- Octane Fitness v. ICON Health & Fitness, 572 U.S. 545 (2014)
- Fla. Stat. § 501.2105, Attorney's fees (Online Sunshine)
- S.D. Fla. Local Rules (Rule 16.2, court-annexed mediation)
General information, not legal advice for your situation. Statutes, rules, and fees as of October 2026. Last reviewed October 28, 2026.