# Sued for Trademark Infringement: What Happens Next

> Sued for trademark infringement? A defense roadmap: the 21-day answer deadline, likelihood of confusion, your real defenses, and how these cases settle.

Guide  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/guides/sued-for-trademark-infringement/


<div class="quick-answer">
<strong>Quick answer:</strong> If you have been served with a federal trademark complaint, you generally have 21 days to respond under Rule 12 (60 if you signed a service waiver). Miss it and the plaintiff can take a default judgment, including an injunction against your name. In the first weeks: calendar the deadline, impose a litigation hold, notify your insurer (advertising-injury coverage often reaches trademark claims), stop all direct contact with the plaintiff, and hire trademark counsel, which is mandatory if the defendant is an LLC or corporation. The whole case will turn on likelihood of confusion, weighed through multi-factor tests, so an honest early assessment of confusion, fair use, laches, priority, and the validity of the plaintiff's mark sets your settlement number. Most trademark cases settle, many through coexistence agreements. This is general education, not legal advice.
</div>

A process server hands you a summons and a complaint captioned in federal district court: some company says your business name, logo, or product line infringes its trademark, and it wants an injunction, your profits, and its fees. This is a different situation from a nasty letter. If what you actually received is a demand letter rather than a filed lawsuit, start with [the cease-and-desist guide](/guides/received-trademark-cease-and-desist/) instead; nothing in that scenario has been filed and your options are wider. This guide is for the moment the courthouse is already involved: what the complaint means, the deadlines that now control your life, the defenses that actually win, and how these cases really end.

## What the complaint is actually alleging

Strip away the boilerplate and nearly every trademark complaint stands on one question: **likelihood of confusion**. Under the Lanham Act ([15 U.S.C. § 1114](https://www.law.cornell.edu/uscode/text/15/1114) for registered marks, [§ 1125(a)](https://www.law.cornell.edu/uscode/text/15/1125) for unregistered ones), the plaintiff must prove that your use of the accused name or logo is likely to confuse ordinary consumers about source, sponsorship, or affiliation. Not that the names are similar in the abstract. Not that the plaintiff got there first in some cosmic sense. Confusion, among real customers, in the real market.

Courts answer that question with multi-factor balancing tests that vary slightly by circuit but cover the same ground. The Second Circuit's version comes from [*Polaroid Corp. v. Polarad Electronics*](/blog/polaroid-v-polarad-electronics-confusion-factors-laches/), the Ninth Circuit uses the *Sleekcraft* factors, and the USPTO applies the [thirteen *DuPont* factors](/blog/in-re-dupont-thirteen-factor-confusion-test/). The recurring core:

- **Similarity of the marks** in sight, sound, and meaning
- **Relatedness of the goods or services**: direct competitors get little breathing room; unrelated industries get a lot
- **Strength of the plaintiff's mark**: coined terms like "Kodak" are protected broadly; descriptive terms barely at all
- **Trade channels and customers**: do you sell in the same places to the same buyers?
- **Actual confusion evidence**: misdirected emails, confused reviews, survey results
- **Your intent** in adopting the name

No factor is dispositive, which is both the good news and the bad news: almost every case has arguments on both sides, which is why so few are resolved on early motions and why settlement value tracks the factor-by-factor scorecard. To calibrate how courts actually weigh these, browse the [likelihood-of-confusion case archive](/topics/trademarks/likelihood-of-confusion/).

## The deadlines: 21 days, and what happens if you blow them

**Service of process** starts your clock. Under Federal Rule of Civil Procedure 12(a)(1)(A), you have **21 days from service** to respond with an answer or a Rule 12 motion. If the plaintiff sent a **waiver of service** request under Rule 4(d) and you signed it, you get **60 days** from when the request was sent, which is one reason cooperating with waiver requests is usually smart.

| Situation | Your response deadline |
| --- | --- |
| Formally served with summons and complaint | 21 days from service (FRCP 12(a)(1)(A)) |
| Signed a Rule 4(d) waiver of service | 60 days from when the waiver request was sent |
| Deadline approaching and you need more time | Ask; plaintiff's counsel routinely stipulates to 30 more days |
| Nobody responds at all | Default under Rule 55: allegations taken as true, injunction and money judgment can follow |

The default scenario deserves emphasis because trademark defaults are uniquely painful: the judgment typically includes a **permanent injunction** against your business name. You do not just owe money; you lose the brand, by court order, without ever telling your side. Whatever else happens in the first month, something gets filed by the deadline.

## The first two weeks: holds, insurance, and silence

Three moves, in parallel, none of which require knowing yet whether you will fight or settle.

**Stop contacting the plaintiff.** Once a lawsuit is filed, every email and call goes through counsel. An angry message, an apology, or an offhand "we didn't know about your mark" can all surface later as exhibits. If settlement talks are worth having (they usually are), they are worth having through lawyers who cannot accidentally admit anything.

**Impose a litigation hold.** Being served triggers a duty to preserve potentially relevant evidence. Suspend auto-delete on email and chat for relevant custodians, tell employees in writing not to delete files or posts about the brand or the plaintiff, and preserve the accused materials themselves, even if you sensibly stop using them going forward. Under Rule 37(e), destroyed evidence can produce adverse-inference instructions that sink otherwise winnable cases.

**Notify your insurer in writing, this week.** Many commercial general liability policies cover "personal and advertising injury," and trademark claims arising from your advertising are among the most commonly covered IP claims. Late notice is a classic reason carriers deny otherwise-covered claims, so put every plausible carrier on notice now and let them say no. The full coverage map is in [does insurance cover IP claims](/guides/does-insurance-cover-ip-claims/).

And hire counsel promptly: if the defendant is an LLC or corporation, it **cannot represent itself in federal court**, so a lawyer is not optional. The mechanics mirror the copyright playbook covered in [sued for copyright infringement](/guides/sued-for-copyright-infringement/).

## The defenses that actually win trademark cases

Early case assessment means honestly scoring these against your facts:

1. **No likelihood of confusion.** The headline defense in most cases. Different-looking marks, unrelated goods, sophisticated buyers, a weak or descriptive plaintiff's mark, and zero actual-confusion evidence after years of coexistence all cut your way.
2. **Classic (descriptive) fair use.** [15 U.S.C. § 1115(b)(4)](https://www.law.cornell.edu/uscode/text/15/1115) protects using words descriptively in their ordinary meaning rather than as a mark: a bakery describing its "sweet tart" pastries does not infringe a SWEETART mark. In *KP Permanent Make-Up v. Lasting Impression I*, 543 U.S. 111 (2004), the Supreme Court held this defense can succeed even if some confusion exists.
3. **Nominative fair use.** Truthfully naming the plaintiff's product to refer to it (compatibility claims, comparative ads, repair services, commentary) is generally permitted where you use only what is needed and do not suggest sponsorship. The doctrine comes from *New Kids on the Block v. News America Publishing*, 971 F.2d 302 (9th Cir. 1992).
4. **Laches.** If the plaintiff knew about your use and sat on its rights for years while you built the business, the delay can bar or limit relief. The *Polaroid* case itself is a laches story: the plaintiff waited too long and lost on that ground.
5. **Priority.** Trademark rights flow from use in commerce. If you used the mark first, at least in your territory, you may be the senior party. Dig out first invoices, archived web captures, and old marketing.
6. **Invalidity and genericness.** A registration for a generic or merely descriptive term without secondary meaning is vulnerable. This defense pairs with going on offense.

## Going on offense: the cancellation counterclaim

Trademark defendants have a counterattack copyright defendants lack: you can put the plaintiff's registration itself on trial. Under [15 U.S.C. § 1119](https://www.law.cornell.edu/uscode/text/15/1119), the court in an infringement case can order cancellation of a registration, so defendants routinely counterclaim to cancel on grounds like genericness, descriptiveness, abandonment, or fraud on the USPTO. A credible cancellation counterclaim changes the plaintiff's risk calculus completely: they filed suit to stop you and now stand to lose the registration their whole brand sits on. The grounds and mechanics are covered in [trademark cancellation](/guides/trademark-cancellation/).

## What you could actually owe

**The injunction is the main event.** Most trademark plaintiffs care more about stopping you than collecting from you. Under [15 U.S.C. § 1116(a)](https://www.law.cornell.edu/uscode/text/15/1116), as amended by the Trademark Modernization Act of 2020, a plaintiff who shows likely success gets a **rebuttable presumption of irreparable harm**, which makes preliminary injunctions easier to obtain than they were a decade ago.

**Money** comes under [15 U.S.C. § 1117(a)](https://www.law.cornell.edu/uscode/text/15/1117): the defendant's profits, the plaintiff's actual damages, and costs, all "subject to the principles of equity." Two Supreme Court decisions frame the exposure. In [*Romag Fasteners v. Fossil*](/blog/romag-fasteners-v-fossil-willfulness-profits/), 590 U.S. 212 (2020), the Court held willfulness is not an inflexible precondition to a profits award, though the defendant's mental state remains highly relevant, which is one more reason conduct after you are on notice matters. And attorney's fees are available only in "exceptional cases," a phrase courts now read under the flexible totality-of-the-circumstances standard from [*Octane Fitness v. ICON*](/blog/octane-fitness-v-icon-exceptional-case-fees/), 572 U.S. 545 (2014), which most circuits have imported into Lanham Act cases. Exceptional-case fees run in both directions: an objectively unreasonable plaintiff can end up paying your lawyers.

## TTAB proceeding vs. federal lawsuit: know which fight you are in

Check the caption. If the document came from the **Trademark Trial and Appeal Board** rather than a federal district court, you are in a much smaller fight: an opposition or cancellation at the TTAB decides only who gets or keeps a *registration*. The TTAB cannot award damages, cannot order you to stop selling, and moves on slower, cheaper administrative timelines. That track has its own playbook in [responding to a TTAB notice](/guides/responding-to-a-ttab-notice/). A federal complaint is the full-stakes version: injunctions, profits, and fees all live there. Disputes sometimes run on both tracks at once, and district courts often stay or absorb the TTAB piece.

## How these cases actually end

The overwhelming majority of trademark cases settle, and trademark law offers a settlement tool most litigation lacks: the **coexistence agreement**. Because the legal question is confusion, parties can often engineer confusion away, with commitments about logos, industries, territories, taglines, and keyword advertising, and both sides keep operating. Plaintiffs frequently prefer that to years of fee burn.

The other common endpoint is a **negotiated rebrand**: you phase out the name over 60 to 120 days, sell through inventory, and get a written release with no admission of liability. Run the math without ego. A young business with modest brand equity facing a colorable claim usually rebrands cheaply and moves on; a decade-old business with priority evidence and a weak claim against it is giving away its most valuable asset if it folds. Defense through early motions commonly runs in the tens of thousands, and through trial into the mid six figures, numbers that should anchor every settlement conversation.

## The bottom line

A trademark lawsuit is won or lost on likelihood of confusion, but the first month is won or lost on process: calendar the 21-day Rule 12 deadline (60 with a waiver) and never risk a default that takes your name by court order; impose a litigation hold; put insurers on notice in week one; route all plaintiff contact through counsel. Then score the case honestly, confusion factors, fair use, laches, priority, and the strength of a cancellation counterclaim, and let that scorecard drive you toward the outcome most of these cases reach: a coexistence deal or priced settlement, signed before discovery burns the money. For the broader accused-side map across copyright, patent, and trademark, see the [accused of IP infringement hub](/guides/accused-of-ip-infringement/).

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*This guide is for educational purposes only and is not legal advice. IP outcomes turn on specific facts; talk to a licensed attorney about your situation.*


## Frequently asked questions

### How long do I have to respond to a trademark infringement lawsuit?

Under Federal Rule of Civil Procedure 12, you generally have 21 days after being served with the summons and complaint to file an answer or a motion to dismiss. If you signed a waiver of formal service under Rule 4(d), you get 60 days from when the waiver request was sent. Extensions are routinely granted if someone asks, but if nobody responds at all, the plaintiff can seek a default judgment that converts the complaint's allegations into a collectible court judgment, often including an injunction against your brand.

### What is likelihood of confusion in a trademark case?

Likelihood of confusion asks whether an appreciable number of ordinary consumers would likely be confused about the source, sponsorship, or affiliation of the goods or services. Courts answer it with multi-factor balancing tests: the Polaroid factors in the Second Circuit, Sleekcraft in the Ninth, and the DuPont factors at the USPTO. The recurring core factors are similarity of the marks, relatedness of the goods, strength of the plaintiff's mark, overlapping trade channels, evidence of actual confusion, and the defendant's intent. No single factor decides the case.

### What are the best defenses to a trademark infringement lawsuit?

The workhorse defense is simply that confusion is unlikely: the marks differ, the industries do not overlap, or the plaintiff's term is weak. Beyond that, classic fair use protects descriptive use of words in their ordinary meaning, nominative fair use protects truthfully naming the plaintiff's product, laches punishes a plaintiff who slept on its rights for years, priority applies if you used the mark first, and invalidity attacks the registration itself, including a counterclaim to cancel a generic or merely descriptive mark. Defense strategy is ranking these against the actual facts.

### What can a trademark plaintiff actually win?

The primary remedy is an injunction ordering you to stop using the mark, and since the Trademark Modernization Act of 2020, plaintiffs who show a likelihood of success get a rebuttable presumption of irreparable harm. Money comes under 15 U.S.C. § 1117: the defendant's profits, the plaintiff's actual damages, and costs. After Romag Fasteners v. Fossil, willfulness is not a strict precondition to a profits award, though your mental state still matters a great deal. Attorney's fees are reserved for exceptional cases, judged under the flexible Octane Fitness standard.