Trademark disputes under the Lanham Act are often misunderstood as narrow intellectual-property skirmishes. In practice, they are frequently complex commercial cases that blend trademark law with contract disputes, business torts, and significant financial exposure. Whether a party brings or defends a Lanham Act claim, early strategic decisions often determine the outcome long before trial.

This article discusses how experienced litigators approach Lanham Act cases on both the plaintiff and defense sides, particularly when trademark claims intersect with business sales, licensing representations, and allegations of unjust enrichment.

Lanham Act Claims Are Often Business Cases in Disguise

Many Lanham Act cases arise not from counterfeiting or online infringement, but from failed business relationships. Disputes involving the sale of a business, franchised operations, licensed educational institutions, or regulated enterprises frequently evolve into trademark litigation when relationships collapse.

In these cases, trademark claims often appear alongside allegations of breach of contract, misrepresentation, or rescission. A buyer may claim that licensing or regulatory representations were false, while a seller may continue operating or branding a business after a deal unravels. The Lanham Act becomes the vehicle for addressing not just confusion in the marketplace, but also who has the right to profit from the business identity itself.

For counsel on either side, understanding the commercial context is essential. Trademark law does not operate in a vacuum, and courts routinely examine the surrounding business conduct.

Plaintiff-Side Strategy: Focus Early on Remedies, Not Just Liability

Plaintiffs in Lanham Act cases often make the mistake of focusing exclusively on proving infringement. While liability matters, experienced counsel think early about remedies.

The Lanham Act provides for injunctive relief, damages, and—critically in many cases—disgorgement of profits. Where infringement is willful, courts may enhance damages, including trebling under appropriate circumstances.

In business-driven cases, disgorgement often becomes the central issue. Plaintiffs must be prepared to prove the defendant’s profits attributable to infringing conduct, typically through financial records, admissions, or expert testimony. Failure to plan for the damages phase early can undermine an otherwise strong case.

Equally important is anticipating defenses to profit calculations. Plaintiffs should expect challenges to causation, apportionment, and accounting methodology, and should be prepared to address them with competent financial analysis.

Defense-Side Strategy: Early Reality Checks Are Essential

On the defense side, Lanham Act litigation requires early and candid risk assessment. Defendants sometimes underestimate exposure by focusing solely on whether consumers were “actually confused,” without appreciating the financial consequences of continued use of disputed marks.

Where a defendant continues operating a business after a deal fails or a license is revoked, profit exposure can grow rapidly. In such cases, the absence of expert testimony to dispute profit calculations can be devastating. Courts are permitted to rely on reasonable estimates, and the burden may shift to defendants to prove legitimate deductions.

Defense counsel must evaluate early whether expert financial analysis is necessary, whether injunctive relief can be avoided or limited, and whether settlement makes economic sense before profits accumulate further.

The Importance of Expert Strategy

Expert witnesses often determine the trajectory of Lanham Act cases involving significant revenue. Plaintiffs typically use financial experts to establish gross profits tied to infringing activity, while defendants rely on experts to challenge causation, overhead allocation, or market forces unrelated to trademark use.

Failure to retain appropriate experts—or to do so timely—can leave a party unable to rebut critical elements of the opposing case. Courts are generally unsympathetic to parties who attempt to litigate complex financial issues without competent evidentiary support.

Judicial Perspective: Credibility and Conduct Matter

Courts handling Lanham Act cases pay close attention to the parties’ conduct. Continued use of disputed marks after notice, refusal to unwind transactions, or disregard of regulatory or licensing obligations can significantly influence equitable and damages determinations.

Judges also scrutinize litigation behavior itself. Parties who delay, change counsel repeatedly, or advance shifting narratives often lose credibility, which can affect both liability findings and remedies.

Conclusion

Lanham Act litigation is rarely just about trademarks. It is frequently about business control, financial accountability, and the consequences of failed commercial relationships. Successful handling requires more than knowledge of trademark doctrine—it demands a disciplined litigation strategy grounded in financial reality, evidentiary planning, and an understanding of how courts evaluate commercial conduct.

Whether representing plaintiffs or defendants, lawyers who approach Lanham Act cases with a comprehensive business-litigation mindset are best positioned to protect their clients’ interests and manage the significant risks these cases present.