Answer to Trademark Infringement Complaint (With Counterclaims)

Summary

This template is an answer to a complaint that alleges trademark infringement of a registered trademark and unfair competition under Sections 32 and 43(a) of the Lanham Act (15 U.S.C. §§ 1114 and 1125(a)) and various state law claims. It includes counterclaims for fraud and tortious interference with business relations. The template also includes practical guidance and drafting notes. This answer assumes that the parties' marks are for goods, not services, and that the marks include both words and logos. If either mark is a service mark or a different type of mark (such as a standard character mark, a design mark, or a product configuration or packaging), revise this Answer accordingly. This answer also assumes that defendant has filed an application for trademark registration with the United States Patent and Trademark Office (USPTO). If it has not, revise this answer accordingly. For the deadlines for filing an answer, see FRCP 12(a). Note that defendant must file additional materials along with an answer. Exact requirements vary by district, so check the current federal and local rules that govern the case. Generally, these materials include: • Disclosure statement. When filing an initial pleading, all corporate parties must also file a statement that either "identifies any parent corporation and any publicly held corporation owning 10% or more of its stock" or "states that there is no such corporation." FRCP 7.1(a)(1). Local rules may require disclosure of additional information. For more on the disclosure statement, see Commencing a Lawsuit: Drafting and Filing the Complaint (Federal) — Corporate Disclosure Statement. For a sample disclosure statement, see Rule 7.1 Corporate Disclosure Statement (Federal). • Affirmative defenses (if any). Filing an answer that omits available affirmative defenses may waive them. See Moore's Federal Practice - Civil § 8.08[3]. Thus, make sure to include all potentially relevant affirmative defenses in the answer (here, they are listed in the section Affirmative and Other Defenses below). • Counterclaims (if any). Defendant's answer may state one or more counterclaims against plaintiff. Counterclaims are not defenses to liability, but are rather affirmative and independent claims for relief, just like those stated in a complaint. Thus, counterclaims are set forth in the same way claims are pleaded in a complaint. They are set forth at the conclusion of the answer, after any affirmative defenses. This answer includes the common counterclaims of fraud and tortious interference with business relations (see Counterclaims below). For more on counterclaims in trademark cases, see Gilson on Trademarks § 31.05. For more on counterclaims generally, see Counterclaims: Asserting and Responding to Counterclaims (Federal). • Exhibits. If defendant has a registered trademark, it should attach copies of any registration certificates to the answer. It could also attach exhibits—such as images of its own products or labels or copies of its advertisements as well as those of plaintiff—if such exhibits are relevant to its admissions, denials, or counterclaims. Local rules establish guidelines for the form of exhibits. For more on exhibits, see Moore's Federal Practice - Civil § 10.05. • Proof of service (if answer is not filed electronically). If an answer is not filed electronically, a certificate of service must be filed with the answer or within a reasonable time after service and should specify the date and manner of service. If an answer is e-filed, a certificate of service is not required. FRCP 5(d)(1)(B). Because electronic filing is generally mandatory for persons represented by an attorney (see FRCP 5(d)(3)(A)), defendants typically will not need to file proof of service, but nonetheless, will often include a certificate of service at the end of the pleading. Additionally, note that defendant may file a pre-answer motion to dismiss that asserts any of the following defenses: • Lack of subject matter jurisdiction • Lack of personal jurisdiction • Improper venue • Insufficient process or service of process • Failure to state a claim upon which relief can be granted • Failure to join a party under FRCP 19 See FRCP 12(b). These defenses, if proved, would obviate the need for filing a responsive pleading, as the court would not need to reach the causes of action in the complaint. Defendant should thus evaluate the complaint to determine whether it would be appropriate to move to dismiss before filing an answer. For guidance on filing pre-answer motions to dismiss on the above grounds, see Motion to Dismiss for Lack of Subject Matter Jurisdiction: Making the Motion (Federal), Motion to Dismiss for Lack of Personal Jurisdiction: Making the Motion (Federal), Motion to Dismiss for Insufficient Process or Service: Making the Motion (Federal), Motion to Dismiss for Failure to State a Claim: Making the Motion (Federal), and Motion to Dismiss for Failure to Join an Indispensable Party: Making the Motion (Federal). For more on subject matter jurisdiction, personal jurisdiction, and venue in trademark cases, see Gilson on Trademarks § 11.03[2][a], Gilson on Trademarks § 11.03[2][f], and Gilson on Trademarks § 11.05. For more on failure to state a claim, see Gilson on Trademarks § 13.16. For guidance on drafting an answer to a trademark infringement complaint, see Gilson on Trademarks § 31.04, Answering a Complaint in Trademark Litigation, and Drafting an Answer in Federal Trademark Litigation Checklist. For guidance on drafting a trademark complaint, see Gilson on Trademarks § 31.03. For an overview of trademark infringement, see Gilson on Trademarks § 12.02 and Trademark Infringement and False Designation of Origin Claims, Remedies, and Defenses.