Litigation · For brand owners

Federal Trademark Infringement Litigation

Demandas por infracción de marcas registradas ante los tribunales federales de Florida.

If a competitor is using your federally registered trademark, or one confusingly close to it, Section 32 of the Lanham Act lets you sue in federal court for an injunction, the infringer's profits, your damages, and in exceptional cases attorney's fees. The claim turns on likelihood of confusion, which courts in Florida judge by seven Eleventh Circuit factors. We prepare and bring these cases for brand owners in Florida, Latin America, and Europe.

Discuss your case See the seven confusion factors

Mark registered in Florida only?Infringement of a Florida-Registered Trademark →

7Likelihood-of-confusion factors applied in the Eleventh CircuitFrehling, 192 F.3d 1330 (11th Cir. 1999)

5 yearsContinuous use after registration before a mark can become incontestable15 U.S.C. § 1065

3×Maximum enhancement of actual damages15 U.S.C. § 1117(a)

14 daysMaximum initial life of a TRO issued without noticeFed. R. Civ. P. 65(b)(2)

The claim

Section 1114 protects marks on the federal Principal Register

Section 32 of the Lanham Act, codified at 15 U.S.C. § 1114, is the federal claim for infringing a registered trademark. It reaches anyone who, "without the consent of the registrant," uses in commerce "any reproduction, counterfeit, copy, or colorable imitation of a registered mark" in connection with selling, offering, distributing, or advertising goods or services, where that use "is likely to cause confusion, or to cause mistake, or to deceive."

A second branch, § 1114(1)(b), covers applying a copy of the mark to labels, signs, packages, or advertisements intended for use in commerce. Under that branch, the registrant can recover profits or damages only if the defendant acted knowing the imitation was intended to confuse. An injunction is not limited in the same way.

If your mark is not federally registered, the matching federal claim is 15 U.S.C. § 1125(a). See False Designation of Origin Claims and Federal Unfair Competition Claims. A mark registered only with the Florida Department of State is enforced under Chapter 495; see Infringement of a Florida-Registered Trademark. Most complaints we file plead several of these claims together, because each fills a gap the others leave.

The registration is what makes Section 1114 the stronger claim. It brings presumptions of validity and ownership, nationwide priority from the filing date, and, once incontestable, conclusive evidence of the right to use the mark. These advantages are explained in the section on registration presumptions below.

Before filing, we confirm

The registration is live, on the Principal Register, and owned by the party that will sue
The registered goods or services cover, or are closely related to, what the defendant sells
The defendant's use happened in the United States, not only abroad
No license, consent, or coexistence agreement covers the use
Notice of registration (the ® symbol) was given, or the defendant had actual notice, so profits and damages are available under 15 U.S.C. § 1111
The timeline: when you learned of the use, and what happened since

What you must prove

Four elements, one of which decides most cases

The Eleventh Circuit states the test in two parts: the plaintiff must show "(1) that its mark has priority and (2) that the defendant's mark is likely to cause consumer confusion" (Frehling Enterprises, Inc. v. International Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999)). In practice we prove four things.

Element	What you must show	How it is usually proved	Typical evidence
Valid registration, owned by you	A registered mark on the Principal Register that you own, with priority over the defendant	The certificate is prima facie evidence of validity, ownership, and the exclusive right to use (§§ 1057(b), 1115(a)); conclusive if incontestable (§ 1115(b))	Registration certificate, USPTO status and title records, assignments, first-use dates
Use in commerce	The defendant used the mark in connection with the sale, offering, distribution, or advertising of goods or services, in the United States	Proof of U.S. sales, listings, shipments, or advertising; foreign-only conduct is outside the statute (Abitron, 2023)	Test purchases, screenshots with dates, shipping records, U.S. ad placements
Without your consent	No license, authorization, or agreement covers the use	Your testimony and records; review of past licenses, distribution, and coexistence deals	License files, termination letters, correspondence
Likelihood of confusion	The use is likely to confuse an appreciable number of ordinary buyers about source, sponsorship, or affiliation	The seven Eleventh Circuit factors, weighed together	Side-by-side comparisons, channel and price data, intent evidence, misdirected inquiries, surveys

Damages and profits also depend on remedies-specific facts, such as notice of registration under § 1111 and the defendant's state of mind. See Damages Evaluations.

Eleventh Circuit standard

The seven likelihood-of-confusion factors and how each is proved

Federal courts in Florida apply the seven factors listed in Frehling. No single factor decides the case, but the Eleventh Circuit has said that "the type of mark and the evidence of actual confusion are the most important."

01 · Factor

Type (strength) of mark

Where the mark sits on the scale from generic to fanciful, and how well the market knows it. Third-party use of similar marks in the same market weakens it; use in unrelated markets does not (PlayNation Play Systems v. Velex, 11th Cir. 2019).

Proof: Registration history, sales and ad spend, media coverage, third-party use searches

02 · Factor

Similarity of the marks

Overall impression in sight, sound, and meaning, as buyers meet the marks in the market, not a letter-by-letter comparison.

Proof: Side-by-side exhibits, pronunciation, translations of Spanish or foreign-language marks

03 · Factor

Similarity of the goods or services

Whether buyers would expect the goods to come from one source. The goods need not be identical; related goods count.

Proof: Product catalogs, expansion plans, industry practice

04 · Factor

Retail outlets and customers

Overlap in where the goods are sold and who buys them: the same marketplaces, stores, distributors, or buyers.

Proof: Channel data, Amazon and marketplace listings, distributor lists

05 · Factor

Advertising media

Whether the parties advertise in the same places, such as the same social platforms, search keywords, trade shows, or publications.

Proof: Ad buys, keyword reports, social media accounts

06 · Factor

Defendant's intent

Adopting the mark to benefit from your reputation supports an inference of likely confusion. Willful blindness can count (Frehling).

Proof: Pre-launch documents, prior dealings, ignored cease and desist letters, copying of other brand elements

07 · Factor

Actual confusion

"The best evidence of a likelihood of confusion," though "not a prerequisite" (Frehling). Quality and source of each instance matter.

Proof: Misdirected calls, emails, returns, reviews, social media comments, surveys

Weighing

How courts put it together

Courts weigh the factors as a whole, in light of the facts of the market. A strong mark, a close copy, and overlapping channels can carry a case with little actual confusion. A weak mark with crowded third-party use may lose even with some confusion.

Frehling, 192 F.3d 1330

Timing

Confusion before and after the sale

In United States v. Torkington, 812 F.2d 1347 (11th Cir. 1987), a counterfeiting prosecution applying the Lanham Act standard, the court held that likely confusion includes post-sale confusion of the purchasing public. Whether "initial interest" confusion, which is dispelled before purchase, is actionable remains undecided in the Eleventh Circuit.

ADT v. Alarm Protection Tech. (11th Cir. 2016, unpublished)

Because initial-interest confusion is unsettled here, we do not build a case around it. When a defendant's ads or keywords divert buyers before a sale, we develop proof of confusion at the point of purchase and after it as well.

Registration advantages

What a registration proves for you, and where it stops

A federal registration shifts proof onto the defendant. After five years of continuous use and a timely affidavit, the registration can become incontestable, which shifts more. Neither status proves infringement on its own.

Issue	Registered (Principal Register)	Incontestable
Effect of the certificate	Prima facie evidence of validity, ownership, and exclusive right to use for the listed goods (§§ 1057(b), 1115(a))	Conclusive evidence of the same matters, subject to listed defenses (§ 1115(b))
"Merely descriptive" challenge	Available: the defendant may try to prove the mark lacks distinctiveness	Not available (Park 'N Fly v. Dollar Park & Fly, 1985)
Strength in the confusion analysis	Proved with market evidence	The Eleventh Circuit treats an incontestable mark as presumed at least descriptive with secondary meaning, "and therefore a relatively strong mark" (Dieter, 1989; PlayNation, 2019)
Generic or functional	Can be challenged	Still can be challenged; cancellation for genericness or functionality is available "at any time" (§ 1064(3); § 1065)
Fraud, abandonment, misrepresenting source	Defenses available	Still available (§ 1115(b)(1)–(3))
Fair use, prior local use, equitable defenses	Defenses available	Still available, including laches, estoppel, and acquiescence (§ 1115(b)(4)–(9))
Priority	Constructive use nationwide from the application filing date, with exceptions for earlier users (§ 1057(c))	Same
Likelihood of confusion	Plaintiff must still prove it	Plaintiff must still prove it ("subject to proof of infringement")

◆ marks rows where incontestability changes the result.

How incontestability arises. Under 15 U.S.C. § 1065, the owner must use the mark continuously for five consecutive years after registration, with no adverse final decision and no pending challenge, and file a Section 15 affidavit within one year after the five-year period. Incontestability is available only for Principal Register marks and never for a generic name. We check whether a Section 15 affidavit was filed before we plead, because the difference matters on summary judgment.

Proving confusion

Actual confusion evidence and consumer surveys

Evidence of real confusion is persuasive but not required. A well-designed survey can fill the gap, and a poorly designed one can hurt more than it helps.

Eveready format

Best for strong, well-known senior marks

Respondents see only the defendant's mark or product and are asked, in open-ended questions, who makes it or what company it comes from. Answers naming the plaintiff measure confusion. Because the plaintiff's mark is not shown, a high rate of recognition also says something about the mark's strength. It tends to understate confusion when the senior mark is not top of mind.

Squirt format

Best where the marks meet in the market

Respondents see both marks, often one alone and the other in a lineup with similar products, and are asked whether they come from the same or affiliated companies. It mirrors a store shelf or a marketplace search page. It is less suited where the parties' products rarely appear side by side, and courts examine whether the lineup is realistic.

Actual confusion in the record

Collect it as it happens

Misdirected calls and emails, returns of the defendant's goods to you, reviews blaming you for the defendant's product, and social media comments. Log the date, the channel, and who received it. Courts weigh how many instances there are against the volume of sales, and whether the person was a real buyer.

Controls and admissibility

Where surveys are attacked

Surveys come in through expert testimony, and the other side will challenge them. The usual attacks target the universe of respondents, the stimulus, leading questions, and the control used to strip out guessing. We retain survey experts early, so the design fits the confusion theory pleaded in the complaint.

Sources. Frehling, 192 F.3d 1330 (11th Cir. 1999) (actual confusion is the best evidence but not a prerequisite); American Bar Association, Landslide, "The Use of Surveys in Lanham Act Cases" (2023) (Eveready and Squirt formats).

Early relief

Temporary restraining orders and preliminary injunctions

Most infringement cases are shaped in their first weeks, by a motion to stop the use while the case proceeds. In the Eleventh Circuit, the movant must show a substantial likelihood of success on the merits, irreparable injury, that its threatened injury outweighs the harm to the defendant, and that the injunction would not harm the public interest.

The presumption of irreparable harm. The Trademark Modernization Act of 2020 amended 15 U.S.C. § 1116(a) so that a plaintiff seeking an injunction "shall be entitled to a rebuttable presumption of irreparable harm" on a finding of likely success on the merits (for a TRO or preliminary injunction) or a finding of a violation (for a permanent injunction). The presumption is rebuttable. The defendant will try to rebut it, often by pointing to delay.

Delay is costly. In Wreal, LLC v. Amazon.com, Inc., 840 F.3d 1244 (11th Cir. 2016), decided before the 2020 amendment, an unexplained five-month delay in seeking a preliminary injunction was enough to undermine irreparable harm. A delay of even a few months "militates against a finding of irreparable harm." We plan the injunction motion at the same time as the complaint.

Security and timing. A court may issue a TRO or preliminary injunction only if the movant gives security in an amount the court sets (Fed. R. Civ. P. 65(c)). A TRO issued without notice lasts no more than 14 days unless extended (Rule 65(b)(2)). Where the goods are counterfeit, ex parte seizure under § 1116(d) and asset restraints may be available; see Counterfeiting Claims.

What a strong injunction record includes

Registration certificate and proof of ownership
Dated captures of the infringing use, with U.S. sales or shipping proof
Declarations on your use, sales, reputation, and quality control
Any actual confusion, logged with dates and sources
A timeline explaining each step since you learned of the use
Pre-suit letters and the response, if any (see Cease and Desist Letters)
A proposed order that names the conduct to stop with precision

Remedies

What a court can award on a Section 1114 claim

Remedies for infringement of a registered mark are set out in §§ 1116–1118. Valuation is covered in depth on our Damages Evaluations page; this is the outline.

Injunction

Preliminary and permanent orders stopping the use, on principles of equity, with the TMA presumption of irreparable harm. The defendant may be ordered to file a sworn compliance report.

15 U.S.C. § 1116(a)

Defendant's profits

You prove the defendant's sales; it must prove its costs. Willfulness is not a precondition (Romag Fasteners v. Fossil, 2020), and only the named defendant's profits count (Dewberry Group v. Dewberry Engineers, 2025).

15 U.S.C. § 1117(a)

Your damages and costs

Lost sales, harm to goodwill, corrective advertising, and costs of the action. The court may enter judgment for up to three times actual damages, as compensation and not a penalty.

15 U.S.C. § 1117(a)

Attorney's fees in exceptional cases

Available to the prevailing party, plaintiff or defendant. In the Eleventh Circuit, a case is exceptional if it "stands out from others," under the Octane Fitness standard adopted in Tobinick v. Novella, 884 F.3d 1110 (11th Cir. 2018).

15 U.S.C. § 1117(a)

Destruction of infringing materials

Labels, packaging, advertising, and the plates and molds used to make them may be ordered delivered up and destroyed.

15 U.S.C. § 1118

Counterfeiting enhancements

If the mark used is a counterfeit, treble profits or damages with fees, statutory damages of up to $2,000,000 per mark per type of goods if willful, and ex parte seizure. See Counterfeiting Claims.

15 U.S.C. §§ 1116(d), 1117(b)–(c)

Jury or judge

A claim for actual damages is legal, and either side may demand a jury on it (Dairy Queen, Inc. v. Wood, 1962). A claim for the defendant's profits is equitable, and in the Eleventh Circuit a plaintiff seeking only profits has no right to a jury (Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343 (11th Cir. 2019)). Which remedies you plead therefore decides who hears the case, and we make that choice deliberately at the pleading stage.

U.S. Const. amend. VII

Only U.S. use counts. In Abitron Austria GmbH v. Hetronic International, Inc. (June 29, 2023), the Supreme Court held that § 1114(1)(a) and § 1125(a)(1) reach only infringing use in commerce that occurs in the United States. Foreign sales to foreign buyers are outside the statute, even if they affect a U.S. brand. For Latin American and European brand owners, this means the U.S. case covers what is sold, shipped, or advertised here; conduct in Bogotá or Madrid needs local proceedings, which we coordinate with foreign counsel. Questions remain about goods sold abroad and later resold here and about online sales, and courts are still working them out.

How a case runs

The lifecycle of an infringement lawsuit

Every case is different, but most federal infringement cases in Florida follow this sequence. Many settle along the way, often after the injunction ruling or after discovery reveals the sales figures.

Pre-suitInvestigate and preserveTest purchases, captures, registration review, and a litigation hold. Often a cease and desist letter or demand.
FilingComplaintSection 1114 with related counts under § 1125(a), Florida common law, and FDUTPA, in the right district.
EarlyTRO or preliminary injunctionDeclarations, evidence of likely success, the TMA presumption, a bond, and a hearing.
Rule 26Scheduling and discoveryInitial disclosures, a scheduling order, document requests, sales data, and depositions.
ExpertsSurveys and damagesConfusion surveys, a damages or profits expert, and challenges to the other side's experts.
MotionsSummary judgmentValidity and confusion issues are often narrowed or decided here.
Trial and afterTrial, remedies, appealJury or bench trial, permanent injunction, profits or damages, fee motions, and any appeal to the Eleventh Circuit.

Our Lanham Act litigation is led by Robert H. Thornburg and Susan J. Latham, with James R. Leahy on e-commerce and technology disputes and Melissa Dangond Crews on TTAB proceedings and Spanish-language clients. Before filing, you may want a written infringement opinion and a preservation notice.

Anticipating the defense

What the defendant will argue, and how we prepare for it

We build the plaintiff's case around the defenses most likely to be raised. Full coverage for accused parties is on our Trademark Infringement Defense page.

D1"There is no likelihood of confusion."

We assemble proof on all seven factors, especially strength and actual confusion, and consider a survey before the defendant commissions its own.

D2"The mark is weak, descriptive, or generic."

We gather sales, advertising, and recognition evidence, check for incontestability, and audit third-party use in the same market.

D3"We used it first," or "we only use it locally."

We document your first-use dates and the application filing date, which gives nationwide constructive priority under § 1057(c), subject to earlier users' rights.

D4"It is a fair use, or we are only describing our product."

We show how the defendant uses the term as a brand, not to describe, using its labels, ads, and keyword strategy.

D5"You waited too long."

The Lanham Act has no statute of limitations, but courts measure laches against Florida's four-year period, and shorter delays can rebut irreparable harm. We build and explain the timeline from the first day.

D6"Cancel the registration."

Expect a counterclaim alleging fraud, abandonment, or genericness. We review the prosecution file and specimens before suit.

Lessons learned

Five common mistakes in bringing an infringement case

Each of these can cost a strong claim its best remedy.

Waiting months before seeking an injunction

An unexplained delay invites the argument that the harm is not urgent, even with the TMA presumption.

Wreal (11th Cir. 2016)

Lesson

Decide on early relief when you decide to sue.

Suing only a subsidiary or storefront

Profits are measured by the named defendant's books. Affiliates that booked the sales may be beyond reach unless named.

Dewberry (2025)

Lesson

Map the corporate structure before you plead.

Pleading foreign conduct as U.S. infringement

Sales abroad to foreign buyers are not actionable under the Lanham Act, and claims built on them invite early dismissal.

Abitron (2023)

Lesson

Prove the U.S. sales, shipments, and advertising.

Skipping the registration audit

A registration with stale specimens, goods no longer sold, or a missing Section 15 affidavit gives the defendant a counterclaim or costs you a presumption.

15 U.S.C. §§ 1064, 1065

Lesson

Review the file as the defendant will.

Letting confusion evidence disappear

Misdirected emails and calls are often deleted or never logged, and a late survey cannot recreate them.

Frehling (11th Cir. 1999)

Lesson

Set up a confusion log and a litigation hold now.

In the complaint

How this claim fits a lawsuit

Claims usually pleaded together

False Designation of Origin Claims§ 1125(a) covers unregistered elements and goods outside the registration
Federal Unfair Competition ClaimsPassing off and false affiliation alongside the registered-mark count
Common Law Trademark Rights in FloridaFlorida claim using the same confusion test
FDUTPA Litigation for BusinessesState remedies for deceptive trade practices; fees can run both ways
Federal Trademark Dilution ClaimsAdded only where the mark is famous nationwide

Remedies at a glance

Injunction	TRO, preliminary and permanent, with a rebuttable presumption of irreparable harm (§ 1116(a))
Defendant's profits	Plaintiff proves sales; defendant proves costs (§ 1117(a))
Actual damages	Up to three times, as compensation (§ 1117(a))
Costs and fees	Costs; fees only in exceptional cases
Destruction	Infringing labels, packaging, and molds (§ 1118)
Counterfeits	Treble and statutory damages, seizure: Counterfeiting Claims

What a claim may be worth: see Damages Evaluations.

COURTS

We bring these claims in the U.S. District Courts for the Southern, Middle, and Northern Districts of Florida, and in Florida circuit courts. Section 1114 claims arise under federal law and are usually filed in federal court, with related Florida claims under supplemental jurisdiction. Out-of-state firms with a Florida case: see Local Counsel Representation and MiamiTrademarkLocalCounsel.com.

Being sued?

This page is written for the party bringing the claim. If you have been sued or threatened, see Trademark Infringement Defense, or upload the complaint and note your response deadline.

Questions

Frequently asked questions

Do I need a federal registration to sue for trademark infringement?

Not to sue, but to bring this claim. Section 1114 protects registered marks. Owners of unregistered marks sue under 15 U.S.C. § 1125(a) and Florida common law, but must prove they own a valid, distinctive mark without the help of the registration's presumptions. See False Designation of Origin Claims and Common Law Trademark Rights in Florida.

What does the Eleventh Circuit look at to decide likelihood of confusion?

Seven factors: the type (strength) of the mark, similarity of the marks, similarity of the goods, similarity of retail outlets and customers, similarity of advertising media, the defendant's intent, and actual confusion. The court has called the type of mark and actual confusion the most important (Frehling, 1999).

Do I have to show that real customers were confused?

No. Actual confusion is the best evidence of likely confusion, but the Eleventh Circuit has said it is not a prerequisite. Many cases are proved through the other factors, often with a consumer survey.

What does incontestable status add?

It makes the registration conclusive evidence of validity, ownership, and the exclusive right to use, subject to defenses listed in § 1115(b). The defendant can no longer argue the mark is merely descriptive, and the Eleventh Circuit treats an incontestable mark as relatively strong. You still must prove likelihood of confusion, and the mark can still be attacked as generic, functional, abandoned, or obtained by fraud.

Can I get an injunction quickly?

A court can issue a temporary restraining order and then a preliminary injunction if you show a substantial likelihood of success and the other requirements. Since the Trademark Modernization Act of 2020, a plaintiff likely to succeed gets a rebuttable presumption of irreparable harm. Delay in seeking relief can undercut that showing, so speed matters.

Can I recover attorney's fees?

Only in exceptional cases, and the rule works both ways: a prevailing defendant can also recover fees. In the Eleventh Circuit a case is exceptional if it stands out from others in the strength of a party's position or the way it was litigated (Tobinick v. Novella, 2018).

Will my case be tried to a jury?

If you seek actual damages, either side can demand a jury on that claim. If you seek only the defendant's profits and an injunction, the Eleventh Circuit has held there is no right to a jury on profits (Hard Candy, 2019), so the judge may decide the case.

Can I sue a foreign company that copies my mark?

Yes, for its use of the mark in the United States, such as sales to U.S. buyers or U.S. advertising, if the court has jurisdiction over it. After Abitron (2023), the Lanham Act does not reach purely foreign sales. We coordinate with counsel abroad for conduct outside the U.S.

Is there a deadline to sue?

The Lanham Act has no statute of limitations. Courts apply laches instead, and in Florida cases the Eleventh Circuit uses Florida's four-year limitations period as the touchstone (AmBrit v. Kraft, 1986). Delay can also defeat a preliminary injunction well before then. Treat the date you learned of the use as the start of the clock.

Counterfeiting Claims Trade Dress Infringement Lawsuits False Designation of Origin Claims Infringement Opinions Federal Trademark Registration Trademark Infringement Defense Damages Evaluations Cease and Desist Letters Florida Local Counsel

Secure upload

Discuss your case

Send your registration number, captures or photos of the infringing use, any test purchases, letters exchanged with the other side, and any examples of customer confusion. Spanish-language material is welcome.

Pre-suit review of the registration, the evidence, and the defendants to name
Complaints, TRO and preliminary injunction motions
Survey and damages expert coordination
Federal court litigation in the Southern, Middle, and Northern Districts of Florida

Prefer to talk first? Call or email, or message us on WhatsApp. Atendemos en español.

Sources

General information, not legal advice for your situation. Statutes, rules, and fees as of October 2026. Last reviewed October 28, 2026.