When businesses discover that competitors are using confusingly similar marks, the immediate instinct is often to file a trademark infringement lawsuit. However, before rushing to court, trademark owners must ensure they can satisfy a fundamental requirement: proving actual ownership of the trademark in question. Under the Lanham Act, the federal statute governing trademark law, establishing ownership is not merely a procedural formality; it is the cornerstone upon which any successful infringement claim must be built.
The Lanham Act’s Framework for Trademark Protection
The Lanham Act, formally known as the Trademark Act of 1946,1 provides the statutory foundation for trademark protection in the United States. This comprehensive federal law establishes the procedures for trademark registration, the scope of trademark rights, and the legal remedies available to trademark owners. Central to the Lanham Act’s framework is the principle that trademark rights flow from actual use of a mark in commerce, not merely from the act of registration itself.
Under Section 32 of the Lanham Act,2 registered trademark owners can bring infringement claims against parties who use their marks without authorization in ways that are likely to cause consumer confusion. Similarly, Section 43(a)3 provides protection for unregistered marks that have acquired distinctiveness through use. However, both registered and unregistered trademark owners face the same initial hurdle: demonstrating that they actually own the trademark rights they seek to protect.
The Critical Role of Ownership in Trademark Infringement Claims
Trademark ownership operates differently from other forms of intellectual property. Unlike patents or copyrights, which vest in their creators upon creation or registration, trademark rights are earned through use. The first party to use a distinctive mark in commerce in connection with specific goods or services generally acquires superior rights to that mark, at least within their geographic area of use.
This use-based system creates unique challenges when it comes to proving ownership. A trademark owner must demonstrate not only that they have used the mark, but that their use was both prior to the alleged infringer’s use and sufficient to establish trademark rights. The strength and scope of these rights depend on factors such as the distinctiveness of the mark, the extent of its use, and the geographic reach of the trademark owner’s business.
Proving Ownership: The Evidentiary Requirements
When filing a trademark infringement lawsuit, plaintiffs must plead and ultimately prove their ownership of the trademark with sufficient specificity and evidence. This requirement serves multiple purposes: it ensures that only legitimate trademark owners can enforce their rights, it provides defendants with adequate notice of the claims against them, and it prevents frivolous litigation by parties who lack standing to sue.
For registered trademarks, proving ownership typically involves presenting the trademark registration certificate, which provides prima facie evidence of ownership and validity. However, this presumption can be rebutted, and trademark owners must be prepared to defend their registrations against challenges. They must also demonstrate that they have continued to use the mark in commerce and have not abandoned their rights.
Unregistered trademark owners face a more challenging burden. They must prove that they were the first to use the mark in commerce, that their use was sufficient to create trademark rights, and that those rights extend to the geographic area where the alleged infringement is occurring. This often requires extensive documentation of the mark’s use, including advertising materials, sales records, customer testimony, and evidence of the mark’s recognition in the marketplace.
This concept was illustrated in the recent case, Rogozinski v. Reddit, Inc.,4 the Ninth Circuit Court of Appeals held that plaintiff had failed to demonstrate ownership over the WALLSTREETBETS mark. As the court stated: “it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.”5 Plaintiff Rogozinski could not allege that his use of WALLSTREETBETS began before Reddit’s use of the same name for its subreddit.
Common Pitfalls in Establishing Ownership
Many trademark infringement cases founder on inadequate proof of ownership. Common problems include insufficient documentation of first use, gaps in the chain of title when trademarks have been assigned or licensed, and confusion about which entity actually owns the trademark rights when multiple related companies have used the same mark.
Another frequent issue arises when businesses assume that incorporating under a particular name or registering a domain name automatically confers trademark rights. While these steps may be relevant to a trademark claim, they do not substitute for actual use of the mark in commerce in connection with goods or services.
Additionally, some trademark owners fail to maintain adequate records of their mark’s use over time. Since trademark rights can be lost through abandonment, owners must be able to demonstrate continuous use or excusable non-use. Gaps in usage or changes in the way a mark is used can complicate ownership claims and potentially weaken a trademark owner’s position in litigation.
Strategic Considerations for Trademark Owners
Given the central importance of ownership in trademark infringement cases, businesses should take proactive steps to document and preserve evidence of their trademark rights. This includes maintaining comprehensive records of when and how trademarks were first used, preserving examples of the mark as used in commerce, and documenting any assignments or licenses of trademark rights.
Regular trademark audits can help identify potential ownership issues before they become problematic in litigation. These audits should examine not only whether trademarks are being used consistently and continuously, but also whether the proper legal entities own the trademark rights and whether all necessary assignments have been properly executed and recorded.
For businesses with trademark portfolios spanning multiple jurisdictions or involving complex corporate structures, ensuring clear chain of title becomes even more critical. Ambiguities in ownership can not only jeopardize individual infringement claims but can also complicate broader business transactions such as mergers, acquisitions, or licensing deals.
Conclusion
The requirement to prove trademark ownership under the Lanham Act reflects the fundamental nature of trademark rights as use-based property interests. While this requirement may seem straightforward, the practical challenges of establishing ownership can be significant, particularly for businesses that have not maintained careful records of their trademark use or have complex ownership structures.
Successful trademark enforcement begins long before the first cease-and-desist letter is sent or the first lawsuit is filed. It begins with the systematic creation and preservation of evidence that demonstrates clear, continuous, and exclusive use of trademarks in commerce. By understanding and preparing for the ownership requirements under the Lanham Act, trademark owners can ensure they are positioned to effectively protect their valuable brand assets when infringement occurs.
The stakes are high and the legal landscape is very complex for trademark owners to approach these issues casually. Proper preparation, documentation, and legal guidance are essential components of any comprehensive trademark protection strategy.
For more information on trademark ownership, trademark law, or I.P. in general, please contact Yonaxis I.P. Law Group.
- 15 U.S.C. §1051 et seq. ↩︎
- 15 U.S.C. §1114. ↩︎
- 15 U.S.C. §1125. ↩︎
- Case No. 24-735 (9th Cir. June 11, 2025) [unpublished]. ↩︎
- Hana Financial, Inc. v. Hana Bank, 735 F.3d 1158, 1163 (9th Cir. 2013), aff’d, 574 U.S. 418 (2015) (quoting Brookfield Communications, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1047 (9th Cir. 1999). ↩︎