Intellectual Property Litigation Lawyer San Diego

For a lot of businesses, a trademark, a body of copyrighted material, or a patent portfolio is worth more than the equipment and inventory on the balance sheet, and it's protected by law that works nothing like the rules governing physical property. TencerSherman LLP represents businesses on both sides of intellectual property disputes: enforcing rights that have been infringed, and defending against infringement claims that are overstated, mistaken, or simply wrong.

Trademark infringement and trade dress

A federal trademark infringement claim under the Lanham Act requires two things: a protectable ownership interest in the mark, and a likelihood that the defendant's use of a similar mark will confuse consumers about the source of the goods or services. Registered marks are covered under 15 U.S.C. section 1114; unregistered marks, trade dress, and false designation of origin claims fall under section 1125(a) of the same Act. Registration makes the first element considerably easier to prove; it isn't required to bring a claim, but it helps.

The Ninth Circuit, which includes San Diego, decides likelihood of confusion using an eight-factor test from AMF, Inc. v. Sleekcraft Boats: the strength of the plaintiff's mark, the similarity between the marks, the relatedness of the goods or services, evidence of actual confusion, the marketing channels used, the type of goods and the degree of care a purchaser is likely to exercise, the defendant's intent in selecting the mark, and the likelihood the parties will expand into each other's markets. No single factor controls; courts weigh all of them together, and cases involving domain names or online marketing tend to weight three factors, similarity, relatedness, and shared use of internet marketing channels, more heavily than the rest.

Trade dress, the distinctive visual appearance of a product or its packaging, gets analyzed under the same likelihood-of-confusion framework, but product packaging and product design are treated differently: packaging can be inherently distinctive, while product design generally has to acquire secondary meaning, consumers actually associating the design with a single source, before it qualifies for protection at all.

Copyright infringement

Copyright protects original works fixed in a tangible medium: software, written content, photography, video, architectural plans, and more. Ownership exists automatically at creation, but enforcing it in court requires a step many businesses miss: under 17 U.S.C. section 411(a), a plaintiff generally can't file an infringement suit until the copyright is actually registered, not merely applied for. The U.S. Supreme Court settled this definitively in 2019, in Fourth Estate Public Benefit Corp. v. Wall-Street.com, rejecting the argument that submitting an application was enough. Registration currently takes several months through the standard process, though expedited processing is available for an additional fee when litigation is imminent.

Timing the registration matters for damages too. Statutory damages, which can run up to $150,000 per work for willful infringement without requiring proof of actual financial harm, and attorney's fees under 17 U.S.C. sections 504 and 505 are generally unavailable for infringement that began before the work's registration date, under section 412. A business that waits to register until after it discovers infringement can still recover actual damages for the earlier period, but loses access to the remedies that usually make copyright litigation worth pursuing in the first place. For any business whose value depends on original content or software, registering that material before a dispute arises, not after, is one of the more consequential and least expensive pieces of IP housekeeping available.

Patent infringement

Patent litigation runs on its own track procedurally. Federal district courts have exclusive jurisdiction over patent infringement claims under 28 U.S.C. section 1338(a); no state court has any jurisdiction over a patent claim at all. Appeals go exclusively to the U.S. Court of Appeals for the Federal Circuit under 28 U.S.C. section 1295(a)(1), rather than to the regional circuit that would normally hear an appeal from a given district court, a structure created in 1982 specifically to keep patent law interpretation consistent nationwide rather than fractured across circuits.

Patent litigation is also one of the more specialized and technically demanding areas of IP practice, often requiring deep familiarity with the specific technology at issue alongside the legal doctrine. TencerSherman evaluates patent matters individually and, where the technical subject matter calls for it, works alongside specialized patent counsel rather than treating every patent dispute as interchangeable with trademark or copyright litigation.

Trade secrets and licensing disputes

Trade secret misappropriation is its own detailed area of law, covered fully on the trade secret disputes page, including the California and federal statutes that govern it and the important, frequently misunderstood point that non-compete agreements aren't a valid way to protect proprietary information in California.

IP licensing and distribution disputes sit at the intersection of contract law and IP law: using licensed material outside the scope of the license (a different product line, a different geography, past the license term) can be both a breach of the license agreement and, separately, infringement, since the use exceeds what the license actually authorized. Which theory applies, or whether both do, affects available remedies and where the case gets filed. See the contract disputes page for how the contract side of that analysis works.

Where these cases get filed

Patent and copyright claims belong exclusively in federal court; there's no option to bring those specific claims in state court under any circumstances. Trademark claims under the Lanham Act are also federal, though state-law trademark and unfair competition claims (including California's Unfair Competition Law, covered on the business torts page) can proceed in state court, and are often pleaded alongside the federal claims in the same case. For San Diego matters, that means the U.S. District Court for the Southern District of California for the federal claims, and San Diego County Superior Court for any state-law claims filed separately or in parallel.

Remedies available

Remedies vary somewhat by claim type, but a few points are worth knowing up front. In trademark cases, a plaintiff doesn't have to prove actual financial damage to obtain an injunction; likelihood of confusion alone is enough to support injunctive relief, though damages require their own separate showing. In copyright cases, as noted above, statutory damages and attorney's fees depend heavily on registration timing. In both trademark and copyright cases, a court can also order the destruction or disposal of infringing goods, materials, or inventory.

For businesses on the receiving end of an infringement claim, these same rules cut the other way: an injunction can shut down a product line or a marketing campaign quickly, sometimes before the underlying merits of the claim are ever fully litigated, which is why an early, serious response to an infringement demand letter or a preliminary injunction motion matters more in IP litigation than it does in many other kinds of business disputes.

Frequently asked questions