Common Defenses Against Trademark Infringement Claims

Trademark Defense Strategies for Business Owners Facing Infringement Allegations

After a trademark infringement claim lands on your desk, the pressure builds fast. Business owners in New York already have enough on their plates. From managing inventory to marketing a brand, there isn’t much time left to dig through dense legal arguments. And yet, defending your business name, logo, or design often becomes unavoidable.

At Horn Wright, LLP, we help New York business owners protect what they've built. Our attorneys understand how state and federal trademark laws work, and more importantly, how they affect small businesses, creative professionals, and startups across the Empire State. If someone accuses you of infringement, we can guide you through proven legal defenses to help protect your rights and reduce your risk.

Understand the Trademark Infringement Landscape in New York

Trademark infringement happens when someone uses a protected name, slogan, or logo in a way that could confuse consumers. In New York, claims often show up in retail disputes, media branding battles, and service provider conflicts.

Legal actions can arise in federal court, like the U.S. District Court for the Southern District of New York, or in state-level venues such as the New York State Supreme Court. These courts routinely handle disputes involving tech startups in Flatiron, fashion houses in SoHo, and food trucks rolling through Buffalo.

If your brand name sounds like someone else's, or if your logo shares a similar shape or color palette, you could face a legal notice. But a claim doesn't mean you've done anything wrong. The law leaves plenty of room to push back.

Fair Use: Using Marks in a Descriptive or Comparative Way

"Fair use" serves as one of the most powerful tools for business owners accused of trademark infringement. It allows for certain types of brand usage, especially when the use helps customers understand a product or compare it to another.

There are two kinds of fair use:

• Descriptive fair use applies when you use a word in its regular, dictionary meaning.
• Nominative fair use happens when you refer to another brand to describe your own product.

A bakery in Lower Manhattan calling its product a "New York Empire Bagel" isn’t copying another brand. It's using familiar words to describe what it sells.

Courts look closely at how the mark appears. If you're simply describing what you sell or making an honest comparison, and not trying to confuse or mislead buyers, you may have a strong fair use defense.

Lack of Likelihood of Confusion: Protecting Distinct Branding

One of the clearest defenses is proving that consumers are unlikely to confuse your brand with the accuser’s.

In New York, judges often rely on the Polaroid factors to assess confusion. These include:

• Strength of the original mark
• Similarity between the two marks
• Actual evidence of confusion
• Your intent in choosing your mark
• The overlap between your customer bases
• How your products or services are sold

A handmade soap company that shares a similar name with a tech startup in Tribeca might still be safe. If the audiences don’t overlap and the branding feels different, confusion becomes unlikely.

This defense often depends on strong visual and marketing distinctions. Even businesses with similar names can coexist if they operate in separate spheres.

Prior Use in New York State Commerce

If you can prove you used your brand before the other party registered theirs, you may hold superior rights, at least within your geographic area.

This gets especially important for local businesses that built recognition before someone else tried to register the same or similar trademark. Say a boutique in Astoria sold clothing under a unique name since 2012, but another business registered it federally in 2021. The boutique may have a valid defense based on prior use.

To strengthen this argument, it helps to gather:

• Receipts showing early use
• Website screenshots with dates
• Social media archives
• Business registration documents from New York State

A detailed timeline of your brand’s history can make a real difference.

Abandonment by the Plaintiff

Trademark rights don’t last forever without use. In fact, under U.S. law, if someone stops using a trademark for three consecutive years, and shows no intent to resume, they may lose their rights.

This often happens when a brand goes dormant. Maybe a small label in Albany stopped producing under a name and left its website offline for years. If they later try to revive it and sue someone else for using it, they may face problems.

You can defend yourself by showing:

• Long periods of silence
• No sales or marketing activity
• Expired domain names
• Lack of public visibility

New York’s fast-changing market makes it tough for inactive brands to prove continued ownership.

Fraudulent Registration by the Plaintiff

When someone registers a trademark, they must swear their information is truthful. If they lie, say by claiming exclusive use of a name when they knew others used it first, they may have committed fraud.

This gives you a path to challenge the trademark itself. You might request records through legal discovery, search New York's business registry, or pull older branding materials that contradict their statements.

Signs of fraud could include:

• False claims of first use
• Hiding known competitors
• Submitting forged specimens

If the court agrees, it could cancel their registration entirely.

Functionality Doctrine: When Design Serves a Purpose

Trademarks protect signs of a brand, not practical features of a product. If a design element helps the product function, it can't be monopolized.

This often shows up in packaging, shapes, or features that serve a real purpose. A coffee shop in Syracuse might mold its cups for better insulation. If another business uses a similar shape, the original shop can't claim trademark rights over something functional.

The key is whether removing the feature would hurt how the product works. If so, the design falls outside trademark law.

Parody and Satire as Protected Speech

In New York, where creativity fuels everything from political cartoons to Broadway costumes, parody plays a unique role. Courts tend to protect satirical uses of trademarks, especially when the message clearly differs from the original.

A Bronx-based streetwear brand might riff on a luxury logo to make a social statement. If the new design feels obviously playful or exaggerated, and if it avoids confusing buyers, it may qualify as protected speech.

However, parody doesn’t give a free pass. The use must still be non-commercial or clearly transformative.

To hold up, parody must:

• Add original commentary
• Avoid misleading consumers
• Appear satirical rather than copycat

Invalid Trademark: Generic or Overly Broad Marks

Sometimes, the trademark itself was never eligible in the first place. The law doesn’t protect generic terms that describe a whole category of products. It also limits claims over marks that are too broad or vague.

For instance, trying to trademark "Pizza Slice" for a restaurant in Brooklyn won’t go far. Courts view that as a generic phrase that belongs to everyone.

You can defend against an infringement claim by showing the trademark:

• Describes the product category
• Lacks distinctiveness
• Was never enforced properly

In markets like New York, where business names often rely on geographic or cultural terms, overreach happens more than you might think.

 Consent or License from the Trademark Owner

Surprisingly, many infringement claims fall apart due to earlier permissions. If you had the right to use a trademark, either formally through a contract or informally through a working relationship, you may have a valid defense.

This is especially relevant in collaborative industries like design, media, or food service. A deli in Yonkers might operate under a brand name passed down from a previous owner or created in partnership.

To support this defense, collect:

• Old partnership agreements
• Emails granting brand use
• Payment records tied to licensed branding

Even without a signed contract, courts can infer consent if both parties acted like permission existed.

Statute of Limitations and Laches

If the trademark owner waited too long to file their claim, you may argue they gave up their right to enforce it. This is where the statute of limitations and laches come into play.

While federal trademark law doesn’t have a strict statute, courts often look at delays through the lens of fairness. If a New York artist used a brand name publicly for five years without complaint, then suddenly gets sued, a judge might view the claim as unfair.

Laches focuses on:

• How long the plaintiff waited
• Whether you relied on their silence
• The harm caused by the late filing

It’s not enough that they delayed. You also need to show that the delay hurt your ability to operate or plan.

Know Your Rights, Protect Your Brand

If you’re facing a trademark infringement claim in New York, don’t panic. The law offers several strong defenses, many of which apply to small businesses, artists, and local entrepreneurs. Horn Wright, LLP, helps clients across New York protect their work, reputation, and peace of mind. Our attorneys understand how to build a case around what makes your business unique and defend it with clarity and purpose. Let us help you stand your ground when it matters most.