Common-Law Priority Evidence Checklist: Proving First Use and Market Penetration

By Casey Scott McKay · 2025-05-25

This checklist assembles the evidentiary record behind a common-law trademark priority claim in ten phases, from the litigation hold on day one to the signed coexistence agreement that closes the file. It covers fixing a defensible first-use date for each good and each service, collecting proof from custodians who can authenticate it under Fed. R. Evid. 902(11), 902(13), and 902(14), computing the four Natural Footwear market-penetration metrics including the purchaser-to-potential-purchaser ratio that most practitioners skip, and converting those numbers into a Core / Contested / Conceded territory map built on Core Based Statistical Areas rather than state lines. Later phases cover the federal filing that stops the territory shrinking, the state registrations whose sworn dates routinely contradict the client, a nine-source investigation of the adverse party's real first-use date and knowledge at adoption, pleading priority and injunction geography with enough specificity to satisfy Fed. R. Civ. P. 65(d)(1), the interrogatories and Rule 45 subpoenas that break claimed dates, and the settlement geography that turns a penetration table into a boundary. One invented matter — Brindle and Co., a Portland coffee roaster facing a North Carolina registrant whose 14 June 2021 filing date froze the map — runs through every phase, and the document closes with a common-mistakes list and a deadlines table covering docket clocks, filing windows, data-retention horizons, and the cancellation and maintenance dates that reopen a territory fight years later.

IP and Technology > Trademarks | Checklist | Published 25 May 2025 - Updated 23 July 2026 | Casey Scott McKay - marksy.us

Summary. Ten phases that build a common-law priority record from documents instead of adjectives. Open the file and fix the posture; nail a first-use date to three independent pieces of paper; collect proof from custodians who can authenticate it; compute the four market-penetration numbers, including the ratio everyone skips; draw a Core / Contested / Conceded map on statistical-area lines; file federally and reconcile the state registrations that contradict your client; take the adverse party apart from public sources before you write a word of pleading; plead territory and injunction geography specifically enough to be enforceable; use discovery to break the other side's date; and settle on a boundary that covers checkout and keywords, not just counties. One invented matter runs top to bottom so you can see what finished looks like.

Keywords: common-law priority evidence · first use documentation · market penetration table · natural footwear factors · zone of reputation · limited area defense · constructive use date · territory mapping · sales by zip code · business records certification · rule 902(11) certification · first-use declaration · concurrent use application · state trademark registration · adverse party investigation · first use interrogatories · coexistence geography · analytics preservation · litigation hold · tea rose-rectanus

What this checklist is for

Use it to build the record behind a claim of common-law trademark priority — the file that answers two questions with paper: what date does my client own, and what territory does that date buy. It works in three postures: an unregistered senior user asserting rights under section 43(a), 15 U.S.C. § 1125(a); an earlier user defending a frozen pocket under the limited area defense of 15 U.S.C. § 1115(b)(5); and a remote junior user raising the good-faith defense.

Who should use it. The litigator opening a priority matter; the prosecution attorney who has just discovered an unregistered senior user and needs to price the problem; in-house counsel deciding whether to fund a penetration expert; the paralegal running the document pull. The doctrine — why rights are territorial, where the circuits split on good faith, what Dawn Donut actually holds — is in Where Your Trademark Rights End: Tea Rose-Rectanus, Dawn Donut, and the Geography of Common-Law Priority. The reasoning behind each judgment call, with model declaration and complaint language and cost tables, is in Establishing and Proving Common-Law Trademark Rights. This is the working list. Nothing here re-teaches the doctrine.

What you'll need before you start. The mark as actually used, in the form used, with a specimen; the exact goods and services in dispute; the client's entity history and every predecessor name; accounting-system credentials or an export-capable controller; the advertising ledger with vendor invoices, not an annual total; analytics and e-commerce platform admin access; the name of the printer, the ad agency, and the payment processor; every state trademark registration the client already holds; the adverse party's serial or registration number; and a client contact with authority to approve a five-figure spend inside a week.

| Phase | You finish with | Typical elapsed time | |---|---|---| | 1 — Open the file, fix the posture | A hold notice, a posture memo, and four docket entries | Day 1 | | 2 — Fix the claimed first-use date | One date per good and service, each backed by three documents | Days 1–10 | | 3 — Collect and authenticate the proof | A Bates-numbered exhibit set with certifications attached | Weeks 1–5 | | 4 — Compute the penetration metrics | A four-factor table per market, per year, with the ratio computed | Weeks 2–6 | | 5 — Map the territory | A Core / Contested / Conceded map and one demonstrative | Weeks 3–7 | | 6 — Federal and state filings | An application on file and every sworn date reconciled | Week 1 to file; weeks 2–8 to reconcile | | 7 — Investigate the adverse party | A nine-source dossier on their date, territory, and knowledge | Weeks 2–6 | | 8 — Plead priority and relief geography | A complaint or answer that supports the injunction you want | Weeks 5–9 | | 9 — Discovery aimed at dates and territory | Their real first-use date, from their own third parties | Months 3–13 | | 10 — Settlement geography | An assignment, coexistence agreement, or concurrent registration | Any time; cheapest early |

The running matter. Brindle & Co. LLC roasts coffee in Portland, Oregon: four cafés, a wholesale route to about sixty Willamette Valley restaurants, $4.1 million in annual revenue, no federal registration. Brindle Coffee Roasters of Asheville, North Carolina opened in August 2018, filed a federal application on 14 June 2021, and registered on 8 March 2022. In September 2024 Asheville announced a Portland location and sent a cease-and-desist letter. Portland calls you on Tuesday, 17 September 2024. Everything below is what you do.

Phase 1 — Open the file and fix the posture

[ ] Issue a written litigation hold the same day, addressed by name to the founders, the controller, the marketing lead, and whoever administers the website, and suspend every auto-delete rule in email, Slack, and the analytics properties.
- Why. Analytics and processor data are on short retention clocks that keep running while you think about strategy. An hour spent here forecloses a spoliation argument that otherwise shadows the whole reconstruction.
- Trap. A hold that goes only to the general counsel inbox is not a hold. Name custodians, name systems, and get written acknowledgments back.
[ ] Write a one-page posture memo identifying which of the three fights you are in — senior unregistered user under 15 U.S.C. § 1125(a), earlier user defending under 15 U.S.C. § 1115(b)(5), or remote junior user asserting good faith — because the posture decides whose date matters and which cutoff you measure to.
[ ] Pull the adverse party's full file wrapper from USPTO Trademark Status and Document Retrieval and write down four dates: application filing date, publication date, registration date, and claimed dates of first use and first use in commerce.
- Why. The filing date is the constructive-use date under 15 U.S.C. § 1057(c) and is almost always the cutoff you are measuring your client's territory against.
- Trap. Practitioners measure to the registration date out of habit. For applications filed on or after 16 November 1989 the operative date is the filing date, which can sit years earlier.
[ ] Docket four entries: the constructive-use cutoff date, the five-year anniversary of the adverse registration (the § 2(d) cancellation window under 15 U.S.C. § 1064(1)), the response deadline on any letter received, and an internal go/no-go date six weeks out.
[ ] Confirm the mark is protectable at all before spending a dollar on territory — inherently distinctive, or descriptive with secondary meaning you can prove in each claimed market.
- Authority. Distinctiveness spectrum, Choosing a Strong Trademark; geographic proof of acquired distinctiveness, Secondary Meaning Evidence Checklist.
[ ] Screen for a lawful-use defect before anything else if the goods touch cannabis, kratom, vape, firearms, alcohol, or supplements. Unlawful sales may not count as use at all, TMEP § 907, and in those categories common-law geography is the entire rights position.
- Authority. The Lawful Use Requirement; Regulated-Industry Trademark Filing Checklist; Regulated Industry Branding Toolkit.

Worked example. Brindle & Co.'s posture is both: earlier user defending a § 1115(b)(5) pocket against Asheville's registration, and senior user affirmatively enjoining Asheville's planned Portland store. The cutoff date is 14 June 2021, not 8 March 2022.

Phase 2 — Fix the claimed first-use date

[ ] Interview the founder for two hours and ask exactly three questions, writing the answers verbatim: What was the first thing a stranger paid you for under this name? On what day? What piece of paper exists about it?
- Trap. Founders date the mark from naming, incorporation, or logo delivery. A 2015 slide deck is a 2015 story, not a 2015 date.
[ ] State a separate first-use date for each good and each service, and never let a goods date carry a services claim.
- Why. For goods, the mark must be on the goods, containers, tags, labels, or associated documents and the goods sold or transported. For services, the mark must be used in the sale or advertising and the services actually rendered.
- Authority. 15 U.S.C. § 1127.
[ ] Apply the three-document rule before you commit to a date in writing: one transaction record, one independent money record, and one dated artifact showing the mark in the form used.
[ ] Reject any date resting on a token shipment, an internal transfer, or a friends-and-family sale.
- Authority. Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265-67 (5th Cir. 1975); Zazu Designs v. L'Oreal, S.A., 979 F.2d 499, 503-04 (7th Cir. 1992).
- Trap. The threshold for common-law ownership is nonetheless lower than clients fear and is assessed on the totality of the circumstances, not a sales-volume floor. Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350, 358 (6th Cir. 1998).
[ ] Decide whether you need a use-analogous-to-trademark-use theory, and if so, quantify the audience reached before pleading it.
- Authority. The publicity must be "sufficiently clear, widespread and repetitive to create the required association," with "the actual number of potential customers reached" as the focal point. T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 1375-77 (Fed. Cir. 1996); Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162 (Fed. Cir. 2002).
- Trap. Analogous use dies unless followed by technical use within a commercially reasonable time. Lead with the documented technical date; keep analogous use in reserve.
[ ] Check for a tacking or chain-of-title problem the moment a predecessor entity or an earlier logo appears.
- Authority. Tacking requires legal equivalents creating the same continuing commercial impression, and is a jury question. Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 422-24 (2015). An assignment must carry the goodwill, 15 U.S.C. § 1060(a)(1). See Trademarks in the Deal.
[ ] Search for gaps in use of three years or more and price the abandonment exposure before you assert continuity.
- Authority. 15 U.S.C. § 1127; Trademark Abandonment Evidence Checklist.

Worked example. The founders remember a "March 2016 soft opening." The paper says 2 March 2016: invoice no. 1004 to Alder Street Kitchen, 1122 SE Alder Street, Portland, for four five-pound bags of BRINDLE whole bean; a matching operating-account deposit on 4 March; and printer's invoice no. 88-4471 dated 19 February 2016 for 500 pressure-sensitive labels. A 14 January 2016 food-blog write-up is analogous use held in reserve. Café services carry a separate, later date.

Phase 3 — Collect the proof and make it admissible

[ ] Export accounting and point-of-sale data as CSV or native XLSX with header rows, never as PDF reports, and preserve the field names — order_date, ship_to_zip, bill_to_zip, customer_id, net_amount.
- Why. You will re-cut the data by market three times. A PDF cannot be re-cut, and a report footer bearing today's date is the first thing opposing counsel will point at.
- Trap. bill_to_zip and ship_to_zip diverge for gift orders and corporate accounts. Pull both and say which one your table uses.
[ ] Obtain a Fed. R. Evid. 902(11) written certification from the records custodian at the time of each export, not on the eve of trial, and serve reasonable written notice with the records available for inspection.
[ ] Use Fed. R. Evid. 902(13) for records generated by an electronic process and 902(14) for data copied from a device and verified by hash. Hash every export the day you make it and record the value in the exhibit index.
[ ] Subpoena or request certifications from the third parties who date things the client cannot: the printer's job file, the ad agency's media plan, the merchant processor's settlement records, the carrier's tracking history, the trade show organizer's booth contract, the domain registrar's account history.
- Why. These custodians have no stake in the answer, which is exactly why judges credit them.
- Trap. Many processors purge transaction detail after 24 to 36 months. Send the Fed. R. Civ. P. 45 subpoena in week one, not after the motion to dismiss is decided.
[ ] Order Wayback Machine captures and the Internet Archive's standard authenticating affidavit in the same week. Pair each capture with a declaration under Fed. R. Evid. 901(b)(1).
- Trap. Bare screenshots offered without an affidavit get excluded, and the affidavit request takes weeks you will not have before a preliminary injunction hearing.
[ ] Export analytics at maximum granularity now — GA4 city and region dimensions against totalUsers, sessions, engagedSessions, and averageSessionDuration, monthly, from first use forward.
- Trap. Standard GA4 properties cap user-level retention at fourteen months and default to two. Clients also delete properties during rebrands. What you do not export this month does not exist next year.
[ ] Build the Fed. R. Evid. 1006 summary as a real exhibit — sales by ZIP by year — and make the underlying records available. Since the 1 December 2023 amendment, the summary is admissible whether or not the underlying records are themselves admitted.
[ ] Bates-number everything on receipt, convert exhibits to PDF/A, and maintain an exhibit index with five columns: exhibit number, date of the document, custodian, authentication route, and the fact it proves.
[ ] Draft the first-use declaration as a frame for the exhibits, one authenticating paragraph per exhibit, and disclose any gap in use inside the declaration rather than waiting to be caught.
- Authority. Interested-witness testimony standing alone is treated with suspicion; the record is assessed as a whole, "as if each piece of evidence were part of a puzzle." W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1125-26 (Fed. Cir. 1994). Model language is in the companion guide.

Phase 4 — Compute the market-penetration metrics

[ ] Fix the measurement cutoff first and write it at the top of every table: the adverse party's first use in the disputed market if neither side is registered, or the § 1057(c) constructive-use date if they are.
[ ] Compute all four Natural Footwear factors for every candidate market, for every year from first use to the cutoff.
- Authority. Volume of sales; growth trends in the area; ratio of actual purchasers to potential purchasers; amount of advertising in the area. Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1398-99 (3d Cir. 1985). The Eighth Circuit's formulation adds how long ago significant sales occurred. Sweetarts v. Sunline, Inc., 380 F.2d 923, 929 (8th Cir. 1967); Sweetarts v. Sunline, Inc., 436 F.2d 705, 708-09 (8th Cir. 1971).
[ ] Actually compute the third factor. Divide distinct purchasers by households or by the industry-defined addressable population in that market, and put the percentage in the table.
- Trap. This is the factor practitioners omit because the number embarrasses them. Opposing counsel will compute it, and a table missing one of four factors reads as concealment.
[ ] Present growth as a multi-year series, never a single snapshot, and flag any market where the trend is flat or declining.
[ ] Allocate advertising spend by market from vendor invoices and platform geo-reports — impressions and spend by DMA — rather than from an annual total divided by the number of markets.
- Why. Passive availability is not targeting. Courts ask whether the promotion was directed at the market. Commerce Bancorp, Inc. v. BankAtlantic, 285 F. Supp. 2d 475, 499 (D.N.J. 2003); Burns v. RealNetworks, Inc., 359 F. Supp. 2d 1187, 1194 (W.D. Okla. 2004).
[ ] Locate online sales at the customer, not at the warehouse.
- Authority. "[A] sale to a customer through the internet will be considered a sale in the geographical area in which the customer is located." Optimal Pets, Inc. v. Nutri-Vet, LLC, 877 F. Supp. 2d 953, 962 (C.D. Cal. 2012); accord Glow Indus., Inc. v. Lopez, 252 F. Supp. 2d 962, 984-85 (C.D. Cal. 2002).
- Trap. The de minimis threshold did not move to accommodate e-commerce. Optimal Pets sold into thirty-four states and penetrated none — $1,888 from its single best ZIP code was not enough. 877 F. Supp. 2d at 963. A wide, thin national net can leave a seller rightless everywhere.
[ ] Add a repeat-purchase column. Four hundred customers of whom 260 ordered twice is a market; 400 one-time orders scattered across a metro is advertising spill.
[ ] Benchmark every marginal market against the de minimis line before claiming it: roughly $5,000 in sales to about fifty customers, across two of three measured years, was insufficient in Natural Footwear itself. 760 F.2d at 1400.
[ ] Build a separate zone-of-reputation exhibit only where you have depth metrics, not raw hit counts.
- Authority. More than 7,600 unique Nebraska website visits and roughly 97,000 from surrounding states supported a reputation zone in JS IP, LLC v. LIV Ventures, Inc., No. 8:11CV424, 2012 U.S. Dist. LEXIS 96546, at *15 (D. Neb. July 12, 2012). Where no such evidence was offered, rights did not travel. Echo Drain v. Newsted, 307 F. Supp. 2d 1116, 1128 (C.D. Cal. 2003).

Phase 5 — Map the territory

[ ] Choose the geographic unit before you pull data: Core Based Statistical Areas for goods, Designated Market Areas for anything advertising-driven, and keep ZIP-level granularity underneath so you can redraw a boundary in rebuttal without re-pulling.
- Trap. State lines are almost never the right unit. Courts have confined a user to a single city rather than the state it operated in. Jacobs v. Iodent Chem. Co., 41 F.2d 637, 640-41 (3d Cir. 1930).
[ ] Sort every market into Core, Contested, or Conceded, and write the verdict into the table so nobody argues about it later.
[ ] Concede the weak markets in the first letter you send. It is the cheapest credibility available and it removes the exhibit the other side most wants to cross-examine on.
[ ] Treat the zone of natural expansion as a makeweight, never as the theory. It is rejected by the First Circuit and the Restatement, measured as of the junior user's local priority date, and carried by the party claiming it.
- Authority. Raxton Corp. v. Anania Assocs., 635 F.2d 924 (1st Cir. 1980); Restatement (Third) of Unfair Competition § 19 (1995); five-factor inquiry in Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 523 (C.C.P.A. 1980).
[ ] Produce one demonstrative: a single map with Core shaded, Contested hatched, and Conceded left white, with the sales and ratio figures printed inside each shape.
[ ] Sanity-check the claimed perimeter against the realistic shape of relief. Weiner King ended with a fifteen-mile radius around Flemington, New Jersey plus Long Beach Island; Copy Cop, Inc. v. Task Printing, Inc., 908 F. Supp. 37 (D. Mass. 1995) ended with an injunction limited to metropolitan Boston; Thrifty Rent-A-Car System, Inc. v. Thrift Cars, Inc., 831 F.2d 1177 (1st Cir. 1987) left the prior user with East Taunton, Massachusetts and nothing else.

The finished map, in the running matter. Measured to 3 August 2018:

| Market | Sales | Distinct customers | Households | Ratio | Ad spend placed | Verdict | |---|---|---|---|---|---|---| | Portland-Vancouver-Hillsboro CBSA (OR portion) | $3,612,000 | ~31,400 | ~810,000 | 3.9% | $174,000 | Core | | Clark County, Washington (same CBSA) | $41,300 | ~980 | ~180,000 | 0.54% | reached by the same Portland radio and print buy | Core | | Salem, Oregon CBSA | $88,500 | ~1,900 | ~165,000 | 1.2% | $0 placed; six wholesale accounts | Core, on wholesale continuity | | Bend, Oregon CBSA | $9,200 | ~140 | ~80,000 | 0.18% | $0 | Contested | | Seattle-Tacoma-Bellevue CBSA | $14,700 | ~310 | ~1,500,000 | 0.02% | $0 | Conceded | | North Carolina, statewide, all mail order | $2,900 | ~46 | — | negligible | $6,000 national trade magazine | Conceded |

The trap that costs money. Clients want the whole West Coast. Give it to them and you will spend the case defending Seattle at 0.02% while the judge decides you are unreliable about Portland too. In an aggravated case, overclaiming invites an exceptional-case fee argument under 15 U.S.C. § 1117(a).

Phase 6 — Federal filing and state registrations

[ ] File a federal application the week you take the matter. It is the only instrument in American trademark law that buys territory the client has not entered.
- Authority. 15 U.S.C. § 1057(c); base fee $350 per class under the USPTO fee structure effective 18 January 2025, filed through Trademark Center. Confirm the current schedule before quoting.
- Trap. Surcharges bite: $100 per class for insufficient information, $200 per class for a free-form identification, $200 per additional 1,000 characters of a lengthy identification. Use the ID Manual. See Drafting an Identification of Goods and Services and the Goods and Services Identification Checklist.
[ ] File intent-to-use for any class the client is not yet using, and docket the statement-of-use clock the day the notice of allowance issues.
- Authority. Intent-to-Use Applications; Statement of Use Filing Checklist.
[ ] Run the Pre-Filing Trademark Application Checklist before signing the declaration, and make the dates on the application match the dates in Phase 2 exactly.
[ ] Pull every state registration the client already holds and reconcile each sworn first-use date against the Phase 2 record.
- Why. Founders complete state forms themselves and guess. A signed, dated inconsistency in a public state file is the cheapest exhibit the other side will ever get.
- Trap. Do not quietly ignore a wrong date. Dates of use may be amended before publication with a supporting verified statement, 37 C.F.R. § 2.71(c); TMEP § 903.04. A knowing, material misrepresentation made with intent to deceive is a different problem entirely. In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009); see Trademark Fraud Claim and Self-Audit Checklist.
[ ] File state registrations in every Core market's state — California's Form TM-100 with the Secretary of State's Business Programs Division, Texas's Form 901, and their equivalents elsewhere, typically $50 to $150 per class and issued in two to ten weeks.
- Why. A state registration expands nothing, but it surfaces in full clearance reports, which puts later adopters on practical notice and can bear on their good faith.
- Trap. It is not a substitute for federal filing and will not survive against a senior federal registrant. Sell it honestly.
[ ] Consider a concurrent use application where the map is already effectively divided and the client needs a registration the other side will not consent to.
- Authority. 15 U.S.C. § 1052(d); the application must state the area, goods, and mode of use claimed, and to the extent known the excepted users' names and addresses, registrations and applications, areas, goods, modes, and periods of use. 37 C.F.R. § 2.42; procedure at 37 C.F.R. § 2.99; TMEP § 1207.04; TBMP §§ 1101-1117.
- Trap. Jurisdictional gate: the concurrent applicant's use must have begun before the other party's application filing date. Miss it and there is nothing to divide. And the prior user is presumptively entitled to everything the junior user cannot prove. In re Beatrice Foods Co., 429 F.2d 466, 474-75 (C.C.P.A. 1970).

Phase 7 — Investigate the adverse party

[ ] Download the adverse party's complete TSDR file wrapper, including every specimen of record, and compare each specimen's visible content against their claimed dates.
[ ] Search the USPTO Assignment Search and the Marksy assignment and TTAB records for chain-of-title breaks, security interests, and prior Board proceedings involving the same mark.
- Authority. Trademark Due Diligence Checklist.
[ ] Pull secretary-of-state formation records, assumed-name filings, and local business licenses for the entity and every predecessor, and compare the formation date to the claimed first-use date.
- Trap. A claimed first use predating the entity's existence is not automatically fatal — a sole proprietor may have used the mark first — but it is the opening question at the deposition.
[ ] Run Wayback captures of the adverse party's site at six-month intervals from two years before their claimed date, and preserve each with a timestamped hash.
[ ] Search the major platform advertising archives and the client's own market for evidence of geo-targeted spend inside your territory.
[ ] Collect their franchise disclosure documents, development agreements, investor decks, and press announcements for stated expansion plans.
- Why. Expansion plans in writing defeat a Dawn Donut argument and support present likelihood of confusion. They are also the fastest route to an injunction that is ripe.
[ ] Assemble the good-faith record: who selected the name, what search was run, what the search returned, and when they first learned of your client.
- Authority. The Ninth Circuit holds "there is no good faith if the junior user had knowledge of the senior user's prior use." Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 437-39 (9th Cir. 2017). The Tenth asks whether the adopter intended to benefit from the senior user's goodwill. GTE Corp. v. Williams, 904 F.2d 536, 541 (10th Cir. 1990).
- Trap. Forum can decide the case. Confirm your circuit's rule before you build the theory. See the Trademark Defenses Toolkit.
[ ] Check whether the registrant is dormant in the disputed goods. Three consecutive years of non-use is prima facie abandonment under 15 U.S.C. § 1127, and it converts a defensive matter into an offensive one.
- Authority. Use It or Lose It; Proving and Defeating Trademark Abandonment.
[ ] Order a full common-law and state-register sweep for other users of the mark before you assert exclusivity anywhere.
- Authority. Trademark Clearance Search Checklist; Running a Full Trademark Clearance Search; Trademark Clearance and Brand Selection Toolkit.

Phase 8 — Plead priority and the geography of relief

[ ] Run the Pre-Litigation Enforcement Checklist and decide whether the first move is a letter built around the other side's expansion plans rather than a registration certificate. See Sending an Effective Cease-and-Desist Letter and, from the other chair, Responding to a Cease-and-Desist Letter.
[ ] Plead priority as an act on a date in a place, not as a conclusion. "Plaintiff has used the mark since 2016" fails under Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009).
[ ] Plead the territory with the Phase 4 numbers in the paragraph — dollars, distinct customers, advertising spend, and the named statistical areas — so the court can enter the order you want without a second round of proof.
[ ] Plead jurisdiction under 28 U.S.C. § 1338(a) with supplemental jurisdiction over state claims under 28 U.S.C. § 1367.
[ ] Draft the injunction paragraph to reach digital conduct as it touches the territory, not just physical presence.
- Authority. An injunction that lets an infringer keep using the mark online does not protect the plaintiff inside its own service area. Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 44-48 (2d Cir. 2016). Relief tracks the territory proved. Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264, 268-71 (4th Cir. 2003).
- Trap. Fed. R. Civ. P. 65(d)(1) requires reasonable detail. "Do not infringe" is unenforceable; geo-blocked checkout, marketplace shipping exclusions, keyword restrictions, and disclaimer text are enforceable. Do not forget the security requirement of Fed. R. Civ. P. 65(c). See Preliminary Injunction Motion Checklist for Trademark Cases and Moving for a TRO or Preliminary Injunction in a Trademark Case.
[ ] If you are defending, plead the § 1115(b)(5) limited area defense in the answer under Fed. R. Civ. P. 8(c) with all three elements spelled out — adoption without knowledge, continuous use from before the constructive-use date, and the specific area.
[ ] Plead the objection to injunction scope separately from the ownership defense. They are distinct issues and you want both.
[ ] Add a counterclaim under 15 U.S.C. § 1119 asking the court to restrict the registration to the territory the registrant actually proves.
[ ] Pick the forum deliberately. The Board decides registration and can restrict territory on the register; only a court can enjoin or award money, and a Board decision on a materially identical issue can bind a later court. B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015). See Federal Court vs. TTAB, TTAB Proceedings: Opposition vs. Cancellation, and the TTAB Practice Toolkit.

Phase 9 — Discovery aimed at dates and territory

[ ] Serve ten narrow interrogatories, not thirty broad ones. Federal practice caps you at twenty-five including discrete subparts, Fed. R. Civ. P. 33(a)(1); the Board caps you at seventy-five, 37 C.F.R. § 2.120(d).
[ ] Ask for the first-use date per good and service, with the documents supporting each date identified separately.
[ ] Ask them to describe the specific transaction they contend was the first use — customer, consideration, place of delivery or rendition.
[ ] Ask for the geographic area of use, by ZIP code, as of four dates: claimed first use, application filing, registration, and today.
[ ] Ask for gross revenues by calendar year by state, and advertising expenditures by calendar year by DMA.
[ ] Ask who selected the name, what searches were obtained and from whom, and every occasion on which they learned of a third-party user.
- Trap. A defendant who answers with "we relied on advice of counsel" has put the clearance opinion in issue and waived privilege over it. Decide that before serving the answer, not after the motion to compel. See Trademark Clearance Searching.
[ ] Ask for every expansion plan, implemented or abandoned, and all documents concerning each.
[ ] Notice a Fed. R. Civ. P. 30(b)(6) deposition on seven topics: first use by good and service; the supporting documents and their retention; geographic distribution of sales and advertising by year; name selection; awareness of third-party users; expansion plans; and analytics and e-commerce systems, including retention periods and export methodology.
[ ] Subpoena their third parties under Fed. R. Civ. P. 45 — printer, agency, processor, carrier, registrar, host, show organizer — and calendar the fourteen-day objection window under Rule 45(d)(2)(B).
- Why. This is where these cases are won. The client's own file has been curated; the printer's has not.
[ ] Retain the penetration expert early enough to shape the data pull, and satisfy Fed. R. Evid. 702 as amended effective 1 December 2023, which requires the proponent to establish reliability by a preponderance and directs courts to police whether the opinion reflects a reliable application of the methodology.
[ ] Define the survey universe geographically if you commission one. A national survey proves nothing about whether Bend, Oregon has heard of your client.
- Authority. Trademark Survey Design and Challenge Checklist; Consumer Surveys in Trademark Cases; Evidence and Expert Witness Toolkit.
[ ] Docket expert disclosures at least ninety days before the trial date and rebuttal within thirty days, Fed. R. Civ. P. 26(a)(2)(D). On the Board side, see Understanding TTAB Discovery and the Protective Order.

Phase 10 — Settlement geography and closing the file

[ ] Show the client the cost comparison before the second round of discovery: an assignment closes in four to ten weeks, a coexistence agreement in six to sixteen, a concurrent use proceeding in twenty-four to forty months, and litigation to judgment in eighteen to thirty-six months at many multiples of the price.
[ ] Try to buy the smaller party out first. A single-location prior user with a frozen pocket routinely assigns for a modest sum before anyone explains its leverage.
- Authority. Assignment must carry the goodwill, 15 U.S.C. § 1060(a)(1). Use the Trademark Assignment Agreement — Template and record promptly per the Trademark Assignment Recordal Checklist; the choice of instrument is framed in Assignments vs. Licenses.
[ ] Define territory in the agreement by named Core Based Statistical Areas as defined on the effective date, notwithstanding later OMB revisions, and attach the ZIP list as a schedule.
[ ] Write the online clauses, because that is where the parties will actually collide: no bidding on the other's mark as a paid-search keyword; no use in metadata, alt text, or structured data; a numeric cap on incidental orders shipped into the other's territory; no geo-targeted advertising into it; commercially reasonable geographic controls at checkout; and an annual compliance certification.
- Authority. Online Brand Protection Toolkit; Keyword Advertising Compliance and Enforcement Checklist.
[ ] Require a permanent geographic identifier alongside each party's mark on packaging, signage, website masthead, and marketplace storefronts, in a specified size and proximity.
[ ] Include a 120-day notice-and-negotiate clause for entry into the other's territory, mutual consents to territorially limited registrations under 15 U.S.C. § 1052(d), covenants not to challenge, and successor-binding language.
[ ] Keep quality control out of it.
- Trap. If one party approves the other's goods or sets its standards, you have written a license, and an unpoliced license risks the mark. See Naked Licensing and the Trademark License Quality Control Checklist. The template is the Trademark Coexistence Agreement — Template.
[ ] Close the file with a standing program: a watch service on the mark, an annual re-export of sales by ZIP and analytics, a calendared § 8 and § 9 review, and a diary entry for the agreement's certification date.
- Authority. Trademark Watch Services; Section 8 & 9 Renewal Checklist; Brand Enforcement Toolkit.

Where the running matter lands. Brindle & Co. owns the Portland-Vancouver-Hillsboro CBSA and the Salem corridor on a 2 March 2016 date supported by three documents. It never owned North Carolina. Asheville's 14 June 2021 filing froze that map. So Portland enjoins the planned Portland store, moves under 15 U.S.C. § 1119 to restrict Reg. No. 6,712,338 to exclude the proved territory, signs a coexistence agreement with real digital terms — and files the application it should have filed in 2016.

Common Mistakes

Measuring territory to the registration date instead of the filing date. For applications filed on or after 16 November 1989, the constructive-use date under 15 U.S.C. § 1057(c) is the filing date. Years of your client's growth can sit inside the gap.
Claiming every market the client has ever shipped to. Overclaiming costs credibility on the markets you would have won, and in an aggravated case invites a fee argument under 15 U.S.C. § 1117(a).
Omitting the purchaser-to-potential-purchaser ratio. Three of four factors is not the test, and the missing one is always the unflattering one.
Treating a website as territory. No court has held that a website alone creates nationwide common-law rights. Say it in a brief and you lose the judge on everything else.
Exporting reports as PDFs. You cannot re-cut a PDF by CBSA, and a footer bearing today's date invites an authenticity fight.
Getting the 902(11) certification at the end. Certify at export. Retroactive certifications from a departed controller are how five-year-old sales data becomes inadmissible.
Letting a wrong state-registration date sit. Fix it under 37 C.F.R. § 2.71(c) while it is a clerical correction, not after it has become an intent question.
Pleading a bare "since 2016." Twombly and Iqbal apply to priority allegations, and a vague paragraph produces a vague injunction.
Drawing the injunction in counties only. Guthrie vacated exactly that limitation. Reach the defendant's digital conduct as it touches the territory.
Leading with analogous use. It is a demanding quantitative standard and it dies if technical use does not follow within a commercially reasonable time. Use the documented sale.
Building a plan on the zone of natural expansion. Rejected by the First Circuit and the Restatement, largely mooted by federal registration, and never a theory — only a makeweight.
Waiting to file. Every one of these disputes is born in the gap between "we're using it" and "we filed." See Startup and Founder Brand Toolkit.

Deadlines at a Glance

| Clock | Length | Runs from | Authority / note | |---|---|---|---| | Litigation hold | Same day | Matter opening | Analytics and processor retention are already running | | Analytics user-level retention | 2 months default, 14 months maximum on standard GA4 | Data collection | Export at maximum granularity in week one | | Merchant-processor transaction detail | Commonly 24–36 months | Transaction | Subpoena under Fed. R. Civ. P. 45 immediately | | Constructive-use priority | Attaches on registration, reaches back | Application filing date | 15 U.S.C. § 1057(c); applications filed on or after 16 Nov. 1989 | | Office action response | 3 months, one 3-month extension for $125 | Issue date | 37 C.F.R. § 2.62(a); § 66(a) Madrid cases get 6 months, no extension | | Statement of use | 6 months, extendable up to five times, 36 months maximum | Notice of allowance | $150 SOU; $125 per extension, per class | | Notice of opposition | 30 days, extendable | Publication in the Official Gazette | 37 C.F.R. § 2.102; $600 per class via ESTTA | | Cancellation on § 2(d) grounds | 5 years | Registration date | 15 U.S.C. § 1064(1); abandonment, genericness, and fraud have no window | | Abandonment presumption | 3 consecutive years of non-use | Last bona fide use | 15 U.S.C. § 1127 | | Answer in federal court | 21 days (60 with waiver of service) | Service | Fed. R. Civ. P. 12(a); plead § 1115(b)(5) under Rule 8(c) | | Subpoena objection | 14 days | Service of the subpoena | Fed. R. Civ. P. 45(d)(2)(B) | | Expert disclosures | 90 days before trial; rebuttal within 30 days | Trial date | Fed. R. Civ. P. 26(a)(2)(D) | | Section 8 declaration | Between the 5th and 6th anniversary, 6-month grace | Registration date | 15 U.S.C. § 1058; a lapse reopens the whole map | | Section 15 declaration | Any time after 5 consecutive years | First registration | 15 U.S.C. § 1065; § 1065(2) still preserves a prior user's pocket |