US Trade Mark Infringement & Disputes
If another business is using your trade mark in the United States – or you have received a US trade mark infringement allegation yourself – getting early advice can help you understand your position and avoid making the dispute more difficult.
Panoramix IP supports UK and international businesses dealing with US trade mark infringement, enforcement and disputes, combining UK-based IP expertise with US-qualified capabilities.
Whether you need to stop unauthorised use, respond to a cease and desist letter or assess a developing conflict, we can help you determine the appropriate next step.
Has Someone Infringed Your Trade Mark in the US?
Trade mark infringement can take many forms.
You may have discovered:
- a competitor trading under an identical or confusingly similar name;
- a similar logo, product name or branding;
- counterfeit products being sold using your brand;
- unauthorised Amazon or ecommerce listings;
- a domain name or social media account impersonating your business;
- a former distributor or partner continuing to use your brand;
- another business applying to register a conflicting US trade mark; or
- potentially infringing use discovered as you prepare to enter the US market.
The right response depends on the facts.
Before contacting the other party, it is important to establish what rights you hold, what rights they may have, how the marks are being used and what commercial outcome you want to achieve.
Our wider trade mark infringement and disputes team can help you assess the position and develop an appropriate enforcement strategy.
What Should I Do If Someone Is Using My Trade Mark in America?
Discovering another business using your brand can be frustrating, but sending an immediate demand is not always the best first step. We recommend taking a structured approach.
1. Preserve the evidence
Keep records of how and where the mark is being used. Depending on the circumstances, this might include screenshots, product listings, website pages, advertising, packaging and dates.
2. Review your rights
We assess your relevant US registrations, applications and use of the mark, alongside the rights that may be claimed by the other party.
3. Assess the alleged infringement
We consider the marks, relevant goods and services, nature of the use and other circumstances before advising on the strength of your position.
4. Determine the commercial objective
The best strategy depends on what you actually need to achieve. That might be stopping the use, removing particular listings, securing a rebrand, negotiating coexistence or resolving the dispute without unnecessary litigation.
5. Approach the other party where appropriate
Once the position has been assessed, correspondence or a cease and desist letter may be appropriate.
6. Escalate where necessary
Where an informal or negotiated solution cannot be achieved, we can advise on the available routes for escalating the matter and the US representation required.
US Trade Mark Cease and Desist Letters
A cease and desist letter can be an effective way of addressing unauthorised trade mark use, but it should not simply be fired off without first understanding the underlying rights and risks.
A carefully prepared letter can set out your position, identify the conduct in question and explain what you require the other party to do.
Depending on the circumstances, this could include stopping use of the mark, removing online listings, transferring a domain, changing branding or entering into settlement discussions.
If you are considering sending a letter – or have received one yourself – seek advice before responding.
Panoramix IP’s cease and desist services can help you understand the strength of the position and determine the most appropriate response.
Have You Received a US Trade Mark Infringement Claim?
Being accused of US trade mark infringement does not automatically mean that the claim against you is valid.
Equally, ignoring correspondence from a US attorney can allow a manageable issue to become more serious.
If your UK business has received a cease and desist letter, infringement allegation or other US trade mark correspondence, we can review:
- the rights being asserted;
- your own registrations and applications;
- how and when each party has used the mark;
- the goods or services involved;
- the similarity between the marks;
- the commercial risk to your business; and
- the options for responding or resolving the dispute.
The aim is to give you a clear picture of your position before you decide how to proceed.
UK Business Facing a US Trade Mark Dispute?
Dealing with an overseas legal dispute can be particularly daunting when you’re unfamiliar with the relevant trade mark system.
Panoramix IP can bridge that gap.
Our US-qualified capability gives UK businesses access to US trade mark expertise through a UK-based IP team, helping you understand the issues without having to start from scratch with an unfamiliar overseas adviser.
Where additional US litigation counsel or other specialist support is required, we can advise on and coordinate the appropriate next steps.
If the dispute has exposed a gap in your US protection, we can also advise on US trade mark registration and your wider international portfolio.
US Trade Mark Oppositions and Conflicting Applications
Not every US trade mark dispute begins with infringement.
You may discover that another party has applied to register a trade mark that conflicts with your existing rights, or another party may challenge your own application.
Acting early is important because trade mark proceedings are subject to deadlines.
Our team can assess the conflicting rights, advise on the available options and help you determine whether negotiation, opposition or another route is appropriate.
Ongoing brand monitoring and trade mark watching can also help identify potentially problematic applications before they develop into larger disputes.
Preventing US Trade Mark Problems Before They Arise
Not every dispute can be avoided, but strong preparation can put your business in a much better position.
If the US is an important market, consider:
- carrying out appropriate searches before launching;
- registering important brands early;
- keeping evidence of your use;
- monitoring potentially conflicting applications;
- maintaining your registrations; and
- seeking advice quickly when a conflict appears.
Our trade mark search services, US trade mark registration and trade mark watching services can help you build that protection before a problem develops.
Why Choose Panoramix IP for a US Trade Mark Dispute?
UK-based, US-qualified expertise
We combine the convenience of a UK-based IP firm with direct US trade mark capability.
Enforcement and defence
We support businesses seeking to protect their own rights as well as those facing allegations from other brand owners.
Commercial strategy
Not every dispute needs to become litigation. We consider the commercial objective, risks and proportionality of the available options.
Wider portfolio support
A dispute rarely exists in isolation. We can review your wider trade mark portfolio and identify any gaps that should be addressed as your business grows.
Get Advice on a US Trade Mark Dispute
If you have discovered potentially infringing use in the United States or received correspondence alleging that your business is infringing another party’s rights, speak to us as early as possible.
We can review the position, explain your options and help you determine the most appropriate commercial response.
Client Testimonials
FAQs
What counts as trade mark infringement in the US?
The core US test is ‘likelihood of confusion’ – whether consumers are likely to be confused about the source of goods or services because of a similar mark. Famous marks also get protection against ‘dilution’. The analysis weighs factors like similarity, relatedness of goods and evidence of actual confusion. We assess whether a US use infringes your mark and what to do about it.
Can I take action in the US if I'm based in the UK?
Yes. If you hold a US federal registration (or have US-based rights), you can enforce against infringers there, and we can act on your behalf – from platform takedowns to cease-and-desist letters and, where needed, proceedings. Holding a USPTO registration makes enforcement significantly stronger, which is a good reason to register if you sell into the US.
How do I stop counterfeits or copycats on US online marketplaces?
A US federal trade mark unlocks brand-protection tools on major platforms (such as Amazon Brand Registry) and can support recordal with US Customs to intercept counterfeits at the border. We help you register, enrol in these programmes, and run takedowns and enforcement against persistent infringers.
What remedies are available for US trade mark infringement?
US courts can order injunctions, award the infringer’s profits and your damages (sometimes enhanced), and in exceptional cases attorneys’ fees; counterfeiting can attract statutory damages. Many disputes settle before trial. We weigh the commercial options and pursue the most effective route for your situation.
What is US trade mark infringement?
US trade mark infringement can arise where unauthorised use of a mark creates the type of conflict prohibited under US trade mark law, including circumstances involving a likelihood of confusion.
Whether infringement has occurred is fact-specific, so the marks, goods or services, relevant rights and way in which the signs are being used all need to be considered.
What should I do if a US company is using my trade mark?
Preserve evidence of the use and seek advice before approaching the other business.
An assessment of your rights and the other party’s position can help determine whether enforcement action is appropriate and what form it should take.
Can I enforce my UK trade mark in America?
A UK registration does not automatically give you registered US trade mark protection.
However, the wider position can depend on the rights and use that exist in the US, so seek advice before assuming that you either can or cannot take action.
If the US is an important market and you do not yet have appropriate registered protection, we can also advise on US trade mark registration.
I've received a US cease and desist letter. What should I do?
Do not ignore it, but avoid making admissions or agreeing to demands before understanding your position.
Keep the correspondence and gather information about your own use of the mark. We can review the allegations, relevant rights and commercial risks before advising on an appropriate response.
Can a UK company deal with a US trade mark dispute through Panoramix IP?
Yes. Panoramix IP supports UK businesses with US trade mark matters through our US-qualified capability.
We can assess the dispute and advise on strategy and the appropriate next steps, including where additional US litigation support may be required.
What if someone has applied for my brand name as a US trade mark?
Act quickly. The appropriate response depends on the status of the application, your own rights and the relevant deadlines.
We can assess the application and advise on potential opposition, negotiation or other available options.
Can trade mark monitoring help prevent US disputes?
Monitoring cannot prevent another business from filing or using a conflicting mark, but it can help you discover potential problems earlier.
Our brand monitoring and trade mark watching service includes US trade mark watching and can help identify applications that may require attention.
Do all US trade mark disputes go to court?
No. Many disputes can potentially be addressed through correspondence, negotiation, undertakings, coexistence arrangements or other negotiated solutions.
The appropriate approach depends on the strength of the respective positions, the commercial objectives and the conduct of the parties.
Our Case Studies
Case Study: Wow Hydrate
Case Study: British American Tobacco
Case Study: Cambridge Mechatronics
Case Study: Escape Fitness
Case Study: Lincoln City Football Club
Case Study: The Chartered Institute of Patent Attorneys
