California Trademark Litigation Attorney

About the author: Scott Lesowitz is a 2007 Harvard Law School graduate and former Assistant United States Attorney whose civil litigation practice is based in Southern California. Scott is a founding partner of Lesowitz Gebelin LLP. Scott lives in San Diego with his wife, three children, and bernedoodle. Scott represents clients throughout California, including San Diego, Los Angeles, and Orange Counties.

Claims involving trademark infringement, false advertising, false description, or unfair competition frequently turn on fact-intensive questions, such as whether consumers are likely to be confused, the scope and nature of the plaintiff’s and defendant’s businesses, and the strength of the plaintiff’s trademarks. These disputes can be difficult to predict, as outcomes often depend on nuanced factual details and how those details apply to existing legal precedent.

Early litigation decisions—such as whether to seek a temporary restraining order or preliminary injunction—can have a major impact on both the litigation and the businesses themselves. A company may be forced to rebrand, halt advertising, or pull products from the market on short notice, often before the merits of the case are fully adjudicated.

As a California trademark litigation attorney living in San Diego, I represent plaintiffs and defendants in California trademark litigation, including disputes involving trademark infringement, false advertising, false designation of origin, and unfair competition under both California law and the federal Lanham Act. Given the speed at which trademark disputes can escalate and the strategic importance of early decisions, consulting experienced counsel at the outset can be critical.

If you are involved in a trademark dispute in California—whether you are seeking to enforce your rights or are defending against an infringement or false advertising claim—I welcome you to contact me to discuss the matter. Below is a brief overview of disputes related to trademark infringement, false advertising, and false description. I focus on California law and the federal law in the Ninth Circuit, as I practice in California. This is not a complete overview, and this is in no way a substitute for personal legal advice from an attorney.

What Trademark Law Protects

A trademark is a word, name, symbol, or device, that has the effect of distinguishing goods or services as being made, sold, or offered by a certain source. A distinctive appearance or ornate packaging that consumers associate with a given manufacturer or seller may receive trademark protection. (Note that I loosely use the word “trademark” to refer to all types of marks, including service marks.)

Trademark law traditionally protects against actions that will likely confuse consumers about who manufactured, sold, or provided goods or services. Consumers do not need to know the specific identity of the manufacturer or seller who uses the trademark. It is enough that consumers will likely believe that all products or services with the trademark are made by or sold by the same person or entity.

Claims for false advertising and false description are distinct from trademark infringement claims. They technically do not require the wrongful use of a trademark.

Legally protectable trademark rights may exist even if the trademark has never been registered with the U.S. Patent and Trademark Office. Generally, the first person or entity to use the mark in commerce in a geographic location holds trademark rights over any later users in that location for any lines of business or products for which the mark has been used. However, trademark registration is important, especially for securing rights to remaining areas in the U.S. where the trademark is not in use.

Words or phrases are less likely to receive trademark protection if they seem generic or overly descriptive. For example, if you offered a calculator application for cellphones and marketed it under the names “Math Calculation Device” or “Calculator Application,” you would probably receive no enforceable trademark rights.

This helps explain why products from seemingly random sellers on Amazon.com often have very odd names, like they just strung together a bunch of random letters to make the name. Amazon requires sellers to have a registered trademark for their business name. By using a bunch of random letters for their business name, the sellers ensure that the U.S. Patent and Trademark Office will not find that their name is overly generic and will not find that it is too similar to another name. This speeds up the process of having a trademark application accepted.

Trademark Infringement in California by a California Trademark Litigation Attorney

The Elements of a Trademark Infringement Claim

Trademark infringement generally relates to the unauthorized use of a trademark in a manner that is likely to cause confusion as to the source or seller of a product or service. Trademark infringement may occur when the alleged wrongdoer uses a trademark in connection with an actual or contemplated sale, distribution, or advertisement of a good or service, AND this use of the trademark is likely to cause confusion, mistake, or deception related to the identity or affiliations of the seller, maker, or offeror of the good or service.

Whether there is a likelihood of confusion is not always clear. Within the Ninth Circuit (which includes California), federal courts consider and balance the following factors in determining whether a trademark infringement has occurred:

• The strength of the plaintiff’s trademark (fanciful marks that do not describe the product or service are more likely to be protected),
• The degree of similarity between the plaintiff’s and the defendant’s marks,
• Any evidence of actual confusion (evidence that specific consumers were confused is not always required, as courts generally understand that proving actual incidents of confusion may be unrealistic),
• The degree of similarities in the plaintiff’s and the defendant’s marketing channels,
• The degree of similarity between the plaintiff’s and the defendant’s goods or services (more similarity makes infringement more likely),
• The likely degree of care of the consumers of the goods or services offered (courts assume sophisticated consumers are less likely to be confused),
• Whether the defendant had bad intent, and

• The likelihood of expansion of the lines of products or services offered.

[Sources: 15 U.S.C. § 1114; Trader Joe’s Company v. Trader Joe’s United, 150 F.4th 1040 (9th Cir. 2025); Adidas America, Inc. v. Skechers USA, Inc., 890 F.3d 747 (2018); Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426 (9th Cir. 2017); Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165 (9th Cir. 2007); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1060 (9th Cir. 1999); AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979); Paul Sachs Originals Co. v. Sachs, 325 F.2d 212, 215 (9th Cir. 1963).]

The Availability of Damages and Injunctions for Trademark Infringement

A court may grant an injunction ordering the infringing defendant not to use the trademark in the future. The court may do so even if the defendant did not intend to violate the plaintiff’s trademark rights and did not know that any violation would occur. (However, available damages may be limited as to an innocent infringer.)

Courts may even grant a temporary restraining order or a preliminary injunction ordering the defendant not to use the trademark pending the outcome of trial. This is often a crucial aspect of the litigation, as the time to get to trial can be significant. The litigation over a preliminary injunction generally occurs shortly after a case is filed. Indeed, as a preliminary injunction is considered an extraordinary remedy to address an immediate and urgent problem, delay in seeking the preliminary injunction may be grounds for denying the preliminary injunction. Thus, it is especially important to quickly retain experienced legal counsel when a trademark dispute arises.

The court might also award damages. Damages may be measured by the amount of the defendant’s profits, the amount of the actual damages that the plaintiff suffered, or the amount of what a reasonable royalty would have been for the defendant to have used the plaintiff’s trademarks.

The winning party may obtain its reasonable attorneys’ fees if the case is found to be “exceptional.” A case is more likely to be “exceptional” if the losing party took unreasonable positions in the litigation or if the defendant’s behavior that caused the lawsuit was especially wrongful.

In cases where the defendant has acted intentionally, with malice, or with fraud, the plaintiff may be eligible to receive punitive damages. Punitive damages are designed to punish the defendant and may be greater than the amount of actual damages proved.

In cases involving counterfeit goods, a plaintiff may be entitled to elect to pursue statutory damages. In the case of statutory damages, damages do not have to be tied to either the plaintiff’s losses or the defendant’s profits.

[Sources: Epic Games, Inc. v. Apple Inc., 161 F.4th 1162 (9th Cir. 2025); Fizz Social Corp. v. Maplebear, Inc., 791 F.Supp.3d 990 (N.D. Cal. 2025); Advanced Hair Restoration LLC v. Parsa Mohebi, M.D., Inc., 793 F.Supp.3d 1306 (W.D. Wash. 2025); Los Defensores, Inc. v. Gomez, 223 Cal.App.4th 377 (2014).]

Claims for False Descriptions, False Advertising, and Unfair Competition in California

A plaintiff may sue regarding false descriptions or false advertisements even if the plaintiff does not have legally recognized trademark rights.

It is notable that the misrepresentations need not be related specifically to the plaintiff’s goods or services. For example, let’s say Company A and Company B each sell Nike shoes and are competitors. Company B falsely tells customers that Nike has certified Company B as a distinguished seller of Nike shoes. Company A may be able to successfully sue Company B even though Company B said nothing about Company A or Company A’s goods or services. Of course, if Company B told customers false information about Company A, that also could be grounds for a lawsuit. 

A successful plaintiff may receive an injunction barring the defendant from committing future wrongs, such as making the same false statements in the future. This is significant because an injunction is a court order. Violating a court order can lead to significant penalties.

Before trial, the plaintiff may seek a preliminary injunction in which the court orders the defendant not to perform certain acts pending trial. This is significant as it can take a long time to get to trial.

A plaintiff seeking a preliminary injunction has yet to prove the plaintiff’s case to a judge or jury. The granting of a preliminary injunction is considered an extraordinary measure requiring a showing of a likelihood of success at trial and a likelihood of irreparable injury without the preliminary injunction.

California also has a broad unfair competition law that provides a separate ground for relief, especially equitable relief such as injunctions.

[Sources: Cal. Bus. & Prof. Code § 17200 et seq.; 15 U.S.C. § 1125; Fizz Social Corp. v. Maplebear, Inc., 791 F.Supp.3d 990 (N.D. Cal. 2025; Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131-1132 (9th Cir. 2011); U-Haul Intern., Inc. v. Jartran, Inc., 681 F.2d 1159 (9th Cir. 1982).]

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