Pre-Litigation Enforcement Checklist

By Casey Scott McKay · 2026-01-15

Before you sue, work through this enforcement checklist to strengthen your position — eleven phases that take a trademark matter from the day somebody forwards you a photograph of the infringement to the day you either file, write, or close the file. It covers opening the matter so it survives discovery, auditing your own registration before you audit anyone else's conduct, investigating the target without creating a fact witness, building the claim inventory under 15 U.S.C. §§ 1114, 1125(a), 1125(c), and 1125(d), assembling element-by-element evidence, red-teaming the defenses and counterclaims that will be filed against you, and choosing among district court, the TTAB, the UDRP, the platforms, and Customs. It prices the case honestly, tests whether a judgment is collectible, and works through the cease-and-desist decision including the declaratory-judgment exposure a letter creates under MedImmune. It carries one invented matter — Brindle & Co. of Portland against Kestrel Provisions, LLC of Nashville — through every phase with dates, registration numbers, dollar figures, and the actual decision the workup produced. It closes with the mistakes that lose cases before they start, a deadlines table, and the go/no-go memorandum that ends the phase.

IP and Technology > Trademarks | Checklist | Published 15 January 2026 - Updated 23 July 2026 | Casey Scott McKay - marksy.us

Summary. Before you sue, work through this enforcement checklist to strengthen your position. Eleven phases carry a trademark matter from the forwarded photograph to the go/no-go memo: open the file so it survives discovery, audit your own rights before you audit the other side's conduct, investigate the target without turning your investigator into a fact witness, inventory every federal, state, and contract claim, build the evidence element by element, then deliberately argue the other side's case out loud. Only then do you choose a forum, name the parties, price the matter, and decide whether a demand letter helps you or hands your opponent a declaratory-judgment complaint in a district you would never have chosen. Most of what decides a trademark case is decided here, in the six weeks nobody bills as litigation. One matter — Brindle & Co. against Kestrel Provisions, LLC — runs through every phase, and it does not end the way the client expected.

Keywords: pre-litigation enforcement · cease and desist decision · declaratory judgment risk · lanham act section 32 · section 43(a) claim · chain of title audit · litigation hold · likelihood of confusion evidence · laches and acquiescence · personal jurisdiction · venue 28 u.s.c. 1391 · trademark litigation budget · section 1111 notice · ttab versus federal court · b&b hardware preclusion · counterclaim risk · pre-suit investigation · judgment collectibility · trademark bullying · go/no-go memo

What this checklist is for

Use this checklist to make sure nothing is missed. Every item below matters, and the items are ordered the way the work actually has to happen — because trademark cases are rarely lost at trial. They are lost in the first month, when a registration nobody re-read turns out to be recorded in the founder's personal name, or when a demand letter goes out on Tuesday and a declaratory judgment complaint lands in the Northern District of California on Friday.

Who should use it. Outside counsel opening a new enforcement matter; in-house counsel deciding whether to authorize a budget; litigators inheriting a file from the prosecution side; and founders who have just discovered a copycat and want to understand what their lawyer is about to spend six weeks doing.

What it is not. It is not the emergency playbook. If the accused product launched two weeks ago into national distribution and you are drafting tonight, go straight to the Preliminary Injunction Motion Checklist for Trademark Cases and its narrative companion, Moving for a TRO or Preliminary Injunction in a Trademark Case. This document is what you do when you have time, and it is also the diligence the injunction team will wish you had done. Nor is it a doctrine course: the confusion factors are worked out in Trademark Infringement: Proving Likelihood of Confusion, and the remedies arithmetic in What a Trademark Win Is Worth.

What you'll need before you start. A signed engagement letter and a cleared conflicts check; the full TSDR file wrapper, not a screenshot; every assignment, license, coexistence agreement, consent, distribution agreement, and settlement touching the mark since first use; the client's earliest knowledge date of the accused use, in writing; three years of sales and advertising figures by channel; a named decision-maker with authority to spend; and roughly $25,000 to $40,000 for the workup itself before a complaint is drafted.

The matter carried through. Brindle & Co. is a Portland cold-brew roaster and an Oregon LLC. It owns Reg. No. 5,884,102 for BRINDLE for "coffee; coffee beverages" in Class 30, registered 20 August 2019, with combined §§ 8 and 15 declarations accepted in 2025. On 9 February 2026 a distributor in Nashville asks Nadia Brindle whether the company has "gone into the Southeast." It has not. Kestrel Provisions, LLC, a Tennessee limited liability company, has been selling BRINDLE & OAK ready-to-drink coffee since March 2023 in roughly 340 grocery doors across five southeastern states, from brindleandoak.com, and through Google Ads bought on the phrase "brindle cold brew." Brindle & Co. wants to sue on Monday. This is what the next six weeks looked like instead. (Brindle's other enforcement matter, against Halcyon Beverage Group over BRINDL canned coffee, is the emergency branch, and it runs in the preliminary injunction checklist.)

Phases at a glance

| Phase | What you accomplish | Elapsed | | --- | --- | --- | | 1. Open the file | Conflicts, engagement, hold, privilege architecture | Days 1-3 | | 2. Audit your own rights | Ownership, chain of title, registration health | Days 2-7 | | 3. Investigate the target | Identity, scale, duration, assets, plans | Days 3-14 | | 4. Build the claim inventory | Every federal, state, and contract theory | Week 2 | | 5. Assemble the evidence | Element by element, with the exhibit numbered | Weeks 2-5 | | 6. Red-team the case | Defenses, counterclaims, cancellation exposure | Week 3 | | 7. Choose the forum | Court, Board, UDRP, platform, Customs, arbitration | Weeks 3-4 | | 8. Parties, jurisdiction, venue | Who you sue and where you can reach them | Week 4 | | 9. Price the matter | Budget, collectibility, insurance, fee exposure | Week 4 | | 10. The demand-letter decision | Send, don't send, or send something else | Week 5 | | 11. Go/no-go | The memo, the authority, the trigger date | Week 6 |

Phase 1 — Open the file so it survives discovery (Days 1-3)

[ ] Run the conflicts check against the target, its parent, its subsidiaries, its named principals, its distributors, and its advertising agency — not just the name on the label.
- Trap. The accused product is frequently co-packed. The co-packer is a defendant, and it is often somebody's client.
[ ] Sign an engagement letter that separately scopes the pre-suit workup and litigation, with a stated budget cap for the workup.
- Why. Clients approve $30,000 of diligence far more readily than an open-ended "enforcement matter," and the cap forces the go/no-go conversation to actually happen.
[ ] Issue a written litigation hold the day you open the file, naming custodians: the founder, the marketing lead, the sales lead, whoever administers the watch service, and whoever runs the customer-service inbox.
- Why. The best actual-confusion evidence lives in the customer-service inbox on a 90-day auto-delete, which makes the plaintiff's own spoliation a real risk.
- Trap. Suspend the auto-delete in writing and get confirmation from IT. "We told them" is not a defense to a Rule 37(e) motion.
[ ] Pin down, in writing, the earliest date any employee knew of the accused use — and go looking for it rather than asking.
- Why. Laches and acquiescence run from the client's knowledge, and the client's knowledge is discoverable. Brindle's watch service flagged Kestrel's application, Serial No. 97/994,013, on 12 June 2023; the notice sat unread in a shared mailbox for thirty-two months. Better to find that email in week one than as an exhibit to an opposition brief.
- Authority. Equitable defenses survive incontestability. 15 U.S.C. § 1115(b)(9).
[ ] Route every investigation, search, and survey through counsel, under a written engagement naming counsel as the client.
- Why. A survey the marketing department commissioned is not work product. A survey counsel commissioned in anticipation of litigation usually is — and a test survey that comes back badly is one you want to be able to bury.
- Authority. Fed. R. Civ. P. 26(b)(3), (b)(4)(B)-(C).
[ ] Docket the three dates that can expire while you deliberate: the opposition deadline on any pending application, the five-year window under 15 U.S.C. § 1064, and the presumptive laches period in your likely forum.

Phase 2 — Audit your own rights before you audit their conduct (Days 2-7)

[ ] Pull the complete TSDR record for every registration and application you intend to assert, and read the file wrapper — the specimens, the identification as amended, the § 8 and § 15 filings, and every office action response.
- Why. You are about to hand the defendant a fraud counterclaim if a prior declaration is wrong. Intent to deceive is required, and it is rarely proven, but the discovery is miserable. In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009); see Fraud on the Trademark Office: What In re Bose Actually Requires and the Trademark Fraud Claim and Self-Audit Checklist.
[ ] Confirm the registrant of record is the entity that will be the plaintiff, and reconcile it against the Assignment Recordation Branch record.
- Trap. Brindle & Co.'s mark was assigned from Nadia Brindle personally to the LLC on 14 January 2018 and never recorded. The registration issued in the LLC's name anyway, but the gap is a standing argument and a chain-of-title objection at summary judgment. Record it now under 37 C.F.R. §§ 3.11 and 3.25 before anyone files anything. The mechanics are in the Trademark Assignment Recordal Checklist, and the doctrine in Trademarks in the Deal.
- Authority. 15 U.S.C. § 1060(a)(3)-(4).
[ ] Classify the strength of the asserted mark honestly, and if it is descriptive or a product configuration, confirm you can actually prove secondary meaning.
- Authority. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). The evidence build is in the Secondary Meaning Evidence Checklist; the spectrum itself in Choosing a Strong Trademark.
[ ] Search your own mark before you sue on it, and count the third-party uses.
- Why. A crowded field narrows your scope of protection, and the defendant will run the search you did not. If eleven roasters use "brindle" for something, that is your case, not a footnote. Method in Running a Full Trademark Clearance Search.
[ ] Read every license, coexistence agreement, consent, distribution agreement, and settlement touching the mark, and flag the clauses that bind you: arbitration, forum selection, notice-before-suit, choice of law, and any recital that two similar marks are not confusingly similar.
- Trap. Brindle's 2022 coexistence agreement with Brindle Bakehouse, Inc. recites that "the parties' respective marks are not likely to cause confusion." Kestrel will read that sentence to a jury. Sample terms in the Trademark Coexistence Agreement template.
[ ] Confirm every license has real, exercised quality control, and collect the inspection records.
- Trap. Brindle licensed the mark to Ferry Landing Coffee in Seattle in 2021 by email, with no quality provisions and no inspections. That is a naked licensing counterclaim. FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 516-19 (9th Cir. 2010); Barcamerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 596 (9th Cir. 2002). See Naked Licensing and the Trademark License Quality Control Checklist. Fix what can be fixed before you file; you cannot fix it after.
[ ] Confirm continuous use and identify any gap of three consecutive years.
- Authority. 15 U.S.C. § 1127 (three years of non-use is prima facie abandonment). See Use It or Lose It and the Trademark Abandonment Evidence Checklist.
[ ] Verify you have actually been using the ® symbol, and if not, calendar the date you gave the defendant actual notice.
- Why. This is the most-missed item on the list. Without statutory notice or proof of actual notice, no profits and no damages are recoverable — only an injunction. A demand letter is often the first day the money clock starts.
- Authority. 15 U.S.C. § 1111.
[ ] If you will assert unregistered rights or trade dress, map the geographic territory and market penetration state by state now.
- Authority. United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 100-03 (1918); Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959). See Where Your Trademark Rights End and the Common-Law Priority Evidence Checklist.

Practice tip. Write the Phase 2 findings as a one-page "vulnerabilities" memo addressed to yourself, and update it as the workup proceeds. When the client asks in week five why you are not filing, that page is the answer.

Phase 3 — Investigate the target (Days 3-14)

[ ] Get the exact legal name, entity type, state of formation, principal address, and registered agent from the Secretary of State, not from the website footer.
- Trap. "Kestrel Provisions" on the can is a trade name. The filing entity is Kestrel Provisions, LLC, a Tennessee LLC, registered agent CT Corporation System, Knoxville. Naming the wrong entity costs you a motion and, if the statute of limitations analogue is close, more than that.
[ ] Pull the target's USPTO record: pending applications, registrations, prior office actions, and any prior TTAB proceedings.
- Why. Kestrel filed Serial No. 97/994,013 for BRINDLE & OAK in Class 30 on 8 May 2023 and it registered in 2024 — which means opposition is gone and cancellation under 15 U.S.C. § 1064 is your Board route. It also means Kestrel's registration is a defense unless and until a court exercises its power to cancel under 15 U.S.C. § 1119.
[ ] Engage a licensed investigator through counsel and scope the assignment in writing: nature and size of the business, duration of use, channels, expansion plans, and asset picture.
- Why. How long they have used it changes everything. Use that predates yours in a territory is a defense; long coexistence without confusion is evidence against you; recent expansion supports urgency.
- Trap. Do not let the investigator make pretextual contact with anyone at the target who is represented, and assume the investigator may become a fact witness. Coastline Research's Ardith Reyes bought two cans at a Kroger in Franklin, Tennessee on 3 March 2026 for $8.98, photographed the shelf set, and kept the receipt. Cost: $6,800 flat.
[ ] Preserve the online record in a form that authenticates itself: full-page captures with URL and timestamp, WHOIS and historical WHOIS, Wayback captures, marketplace listings, and the ad copy from the paid-search results.
- Authority. Fed. R. Evid. 902(13)-(14) turn hash-verified electronic captures into self-authenticating exhibits. Use a capture tool that produces the certificate.
[ ] Document the keyword purchases separately: the query, the date, the ad text, the landing page, and whether the mark appears in the ad copy or only in the bid.
- Why. Those are different claims with different odds. The analysis and the platform complaint routes are in the Keyword Advertising Compliance and Enforcement Checklist and Buying a Competitor's Name. Do not re-litigate it here; do collect it here.
[ ] Order a business report and estimate revenue, headcount, and whether there is a judgment to collect.
- Why. Kestrel's estimated $2.9 million in 2025 revenue and absence of real property turns this from a damages case into an injunction case, and changes the budget accordingly.
[ ] Ask whether the goods are counterfeit rather than merely confusing, because the remedies and the sequence are different.
- Authority. 15 U.S.C. §§ 1116(d), 1117(b)-(c); 18 U.S.C. § 2320. If the answer is yes, work the Anticounterfeiting Program Checklist instead — recordation, test buys, seizure orders, and referral are a different discipline.

Phase 4 — Build the claim inventory (Week 2)

[ ] List every federal claim on one page with its statutory hook, and strike the ones you cannot support.

| Claim | Statute | What it needs | | --- | --- | --- | | Registered-mark infringement | 15 U.S.C. § 1114(1) | Valid registration, use in commerce, likely confusion | | Counterfeiting | 15 U.S.C. §§ 1114, 1116(d), 1117(b)-(c) | Spurious mark identical or substantially indistinguishable | | Unregistered mark / trade dress | 15 U.S.C. § 1125(a)(1)(A) | Protectability, non-functionality, secondary meaning if needed | | False designation of origin | 15 U.S.C. § 1125(a)(1)(A) | Likely confusion as to origin, sponsorship, or affiliation | | False advertising | 15 U.S.C. § 1125(a)(1)(B) | Literally false or misleading statement, materiality, injury | | Dilution | 15 U.S.C. § 1125(c) | Nationwide fame before defendant's use, blurring or tarnishment | | Cyberpiracy | 15 U.S.C. § 1125(d) | Distinctive or famous mark, confusingly similar domain, bad-faith intent |

[ ] Test the dilution claim against the fame threshold before you plead it.
- Why. Fame under 15 U.S.C. § 1125(c)(2)(A) means widely recognized by the general consuming public of the United States. Niche fame does not count. A regional cold-brew roaster is not famous, and pleading dilution anyway invites a motion and costs you credibility on the counts that matter. See the Trademark Dilution Claim Checklist and Bringing and Defending a Federal Dilution Claim.
[ ] Identify state claims and confirm supplemental jurisdiction under 28 U.S.C. § 1367(a): statutory and common-law infringement, state dilution, deceptive trade practices, unjust enrichment, and breach of any license.
- Why. State UDAP statutes often carry fee-shifting or multiplied damages the Lanham Act does not.
[ ] Screen for secondary liability against anyone who supplies, hosts, or markets for the primary infringer.
- Authority. Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982); Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 106-09 (2d Cir. 2010).
- Trap. Generalized knowledge is not enough. If you intend to sue a platform, the specific-knowledge letters go out first and get documented.
[ ] Screen the copyright side separately — label art, photography, and website copy travel with the mark, and a registered copyright brings statutory damages and fees the Lanham Act will not.
- Authority. 17 U.S.C. §§ 411(a), 412, 504(c), 505. Registration must issue or be refused before suit, so start it now, not in month four. Run the Copyright Infringement Complaint Checklist and the Copyright Enforcement Toolkit in parallel.
[ ] If packaging or product shape was copied, define the trade dress in words before you plead it, and address functionality.
- Authority. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32-33 (2001). See the Trade Dress Protection Checklist.
[ ] Confirm the accused use is domestic.
- Authority. Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412, 416-17 (2023) (§§ 1114(1)(a) and 1125(a)(1) reach only claims where the infringing use in commerce is domestic).

Phase 5 — Assemble the element-by-element evidence file (Weeks 2-5)

[ ] Build an evidence matrix: one row per element of each surviving claim, one column for the exhibit, one for the custodian, and one for whether the exhibit exists yet.
- Why. This is the difference between a complaint you can support at a preliminary injunction hearing and one you cannot. Every empty cell in the matrix is a task with a name on it.
[ ] Collect validity proof: the registration certificate, the § 15 acceptance, the assignment chain, and dated specimens of use for each year asserted.
- Authority. 15 U.S.C. §§ 1057(b), 1065, 1115(a)-(b).
[ ] Collect strength proof: annual sales and unit volume by channel, advertising spend by year and medium, unsolicited media coverage, awards, social following, and any brand-awareness study.
- Trap. Marketing decks with rounded numbers are not evidence. Get the figures from accounting, with the person who can swear to them identified by name. Brindle produced $1.4 million of advertising spend since 2019 and forty-one unsolicited press mentions, tied to a declaration from its controller.
[ ] Collect confusion proof and treat it as gold: misdirected emails, misdirected orders, distributor questions, wrong-company invoices, social media posts, and warranty calls.
- Trap. Actual confusion evidence is almost always hearsay unless you plan for it. Get the confused person's name and, where possible, a short declaration under 28 U.S.C. § 1746 while they still remember.
[ ] Run the applicable confusion factors as your circuit states them, in writing, and score each one honestly.
- Authority. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979); In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) (the Board's version). Unpacked in Trademark Infringement: Proving Likelihood of Confusion.
[ ] Decide whether to commission a survey, and if so commission a pilot first.
- Why. A full Eveready or Squirt survey runs $35,000 to $120,000. A pilot at $8,000 to $15,000 tells you whether to spend the rest, and — commissioned through counsel — stays protected if the number is bad.
- Authority. Fed. R. Evid. 702; Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993). See Consumer Surveys in Trademark Cases, Commissioning and Attacking a Trademark Survey, and the Trademark Survey Design and Challenge Checklist.
[ ] Build the damages file early: the defendant's estimated unit volume and price, your lost sales, any price erosion, and a corrective-advertising estimate with a methodology attached.
- Authority. 15 U.S.C. § 1117(a); Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212, 218-19 (2020) (willfulness is not an inflexible precondition to a profits award under § 1125(a)). See the Trademark Monetary Recovery Checklist and Proving Trademark Damages and Disgorging Profits.

Phase 6 — Red-team the case (Week 3)

[ ] Assign someone in the firm to write the defendant's motion to dismiss and answer. Give them two days and no loyalty to the client.
[ ] Work the standard defense list and score your exposure on each: priority, fair use, nominative use, First Amendment and expressive use, functionality, laches, acquiescence, estoppel, unclean hands, first sale, and geographic remoteness.
- Authority. 15 U.S.C. § 1115(b)(1)-(9); Jack Daniel's Props., Inc. v. VIP Prods. LLC, 600 U.S. 140, 153 (2023). The full inventory is the Trademark Defenses Toolkit; the fair-use branch is Raising a Trademark Fair Use Defense.
[ ] Compute the laches exposure numerically.
- Why. The Lanham Act has no statute of limitations. Courts borrow the analogous state limitations period as the presumptive laches period, and delay past it shifts the burden to you. Kason Indus., Inc. v. Component Hardware Grp., Inc., 120 F.3d 1199, 1203 (11th Cir. 1997). Brindle's thirty-two months of unread watch notices sits inside Tennessee's three-year period for injury to property — but only just, and only if the clock started at the notice rather than at Kestrel's first shipment.
- Trap. Progressive encroachment is the answer when the defendant's use has materially expanded, but it is an argument you have to plead and prove, not an assumption. Internet Specialties West, Inc. v. Milon-DiGiorgio Enters., 559 F.3d 985, 990-92 (9th Cir. 2009).
[ ] Score the cancellation counterclaim against your own registration: abandonment, naked licensing, fraud, genericness, functionality, and improper assignment of an intent-to-use application.
- Authority. 15 U.S.C. §§ 1064, 1119, 1060(a)(1). Genericness in particular deserves its own pass — see the Genericness Defense and Prevention Checklist and Genericide.
- Why. A counterclaim that can kill the registration is worth more to the defendant than your claim is worth to you. That asymmetry, not the merits, is what settles most cases.
[ ] Audit the client's policing history and be ready to explain the ones you did not chase.
- Trap. "We enforce selectively" is a fine business policy and a terrible deposition answer. Assemble the enforcement log — every letter, every settlement, every coexistence — before the defendant assembles it for you. Standing programs are covered in the Brand Enforcement Toolkit and Trademark Watch Services.
[ ] Ask what the defendant can counterclaim beyond trademark: tortious interference, unfair competition, antitrust, or state anti-SLAPP exposure if the use is expressive.

Phase 7 — Choose the forum (Weeks 3-4)

[ ] Decide whether you need an order that stops conduct. If yes, the Board is not an option — it can refuse or cancel a registration and nothing else.
- Authority. 15 U.S.C. § 1067; TBMP § 102.01. See Federal Court vs. TTAB.
[ ] If a Board proceeding is on the table, decide the preclusion question deliberately before you file it.
- Authority. B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 160 (2015) (a Board likelihood-of-confusion decision can preclude relitigation in court where the usual elements are met and the usages adjudicated are materially the same).
- Trap. This cuts both ways and it is the single most consequential forum decision in trademark practice. A cheap opposition you lose on the pleadings-plus-briefs record can cost you the district court case. Filing mechanics are in the TTAB Opposition Filing Checklist and TTAB Proceedings: Opposition vs. Cancellation.
[ ] If domains are the problem and there is no operating business behind them, price the UDRP against a lawsuit.
- Why. A WIPO complaint costs $1,500 for a single-member panel and typically resolves in eight to ten weeks, with transfer as the only remedy and no damages. An ACPA claim under 15 U.S.C. § 1125(d) brings statutory damages of $1,000 to $100,000 per domain name and in rem jurisdiction under § 1125(d)(2). See UDRP vs. Federal Lawsuit, the UDRP Complaint Checklist, and Cybersquatting and the ACPA.
[ ] Work the platform and channel remedies that cost nothing before you spend anything: marketplace brand registries, the ad platforms' trademark complaint processes, app store IP forms, and — where there is copyrightable material — a notice under 17 U.S.C. § 512(c)(3).
- Trap. A § 512 notice is sworn under penalty of perjury, and a knowing misrepresentation carries liability under § 512(f). Do not use a copyright notice to solve a trademark problem. See the DMCA Takedown Notice Checklist and the Online Brand Protection Toolkit.
[ ] Record the portfolio with U.S. Customs and Border Protection if any accused goods are imported. Recordation is $190 per mark per class through IPRR and buys you detentions you cannot otherwise get.
- Authority. 19 U.S.C. § 1526; 19 C.F.R. § 133.3. See Stopping Counterfeits at the Border.
[ ] Check whether an agreement forces arbitration or a particular court, and whether a notice-and-cure period must run first.
[ ] Decide federal or state court, knowing that Lanham Act jurisdiction is concurrent but that federal court is the default for a reason.
- Authority. 28 U.S.C. §§ 1331, 1338(a); 15 U.S.C. § 1121; Aquatherm Indus., Inc. v. Fla. Power & Light Co., 84 F.3d 1388, 1394 (11th Cir. 1996). A complaint that pleads only state claims is usually not removable on federal-question grounds. Gateway 2000, Inc. v. Cyrix Corp., 942 F. Supp. 985, 990 (D.N.J. 1996).

Phase 8 — Parties, jurisdiction, venue, and service (Week 4)

[ ] Confirm the responsible party and their correct legal name for every defendant, and add the ones the client did not think of: manufacturer, co-packer, distributor, retailer, advertising agency, and any corporate officer who personally directed the conduct.
- Authority. Chanel, Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472, 1477 (11th Cir. 1991) (officers personally liable where they actively and knowingly caused the infringement).
[ ] Confirm the plaintiff has standing and is the real party in interest, and join the licensor if a licensee is suing.
- Authority. Fed. R. Civ. P. 17(a), 19; Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 129-34 (2014) (zone of interests and proximate cause for § 1125(a) claims).
[ ] Test personal jurisdiction defendant by defendant, on the facts you can prove today.
- Authority. Daimler AG v. Bauman, 571 U.S. 117, 137 (2014); Walden v. Fiore, 571 U.S. 277, 284-86 (2014); Ford Motor Co. v. Montana Eighth Judicial District Court, 592 U.S. 351, 359-65 (2021); and for interactive websites, the sliding scale of Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119, 1124 (W.D. Pa. 1997).
- Trap. A nationally accessible website is not, by itself, purposeful availment in most circuits. Two shipments into the forum usually are. Buy the product into the forum before you file.
[ ] Confirm venue under 28 U.S.C. § 1391(b), and separately ask whether the venue you can hold is the venue you want — circuit law on confusion, the judge's trademark experience, and the median time to a preliminary injunction ruling all differ materially.
[ ] Plan service before you file. Domestic service is due within 90 days under Fed. R. Civ. P. 4(m); that deadline does not apply to service abroad, but the Hague Service Convention route to some countries runs six to twelve months and should change your timeline, not surprise it.
[ ] Check the court's local rules, get CM/ECF credentials, resolve pro hac vice, and retain local counsel.

Phase 9 — Price the matter honestly (Week 4)

[ ] Build a staged budget and put it in writing to the client.

| Stage | Brindle & Co. estimate | | --- | --- | | Pre-suit workup, legal time (Phases 1-11) | $28,500 | | Investigation and evidence capture (vendor) | $6,800 | | Pilot survey | $11,000 | | Complaint, filing fee, service | $22,000 + $405 | | Through the Rule 16 conference | $145,000 | | Through fact and expert discovery | $410,000 | | Through trial | $610,000 |

[ ] Add the cost of the counterclaim you scored in Phase 6, and price the outcome in which you lose the registration.
[ ] Check the client's CGL and media policies for advertising-injury coverage and tender early if there is any counterclaim.
[ ] Assess collectibility before you assess the merits, not after.
- Why. An injunction against a company with $2.9 million in revenue and leased everything is worth having. A $900,000 judgment against it is worth about as much as the paper.
[ ] Price your own fee exposure. The Lanham Act fee provision runs both directions, and the "exceptional case" standard is the Octane Fitness standard in most circuits.
- Authority. 15 U.S.C. § 1117(a); Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014).
- Trap. Overreaching enforcement is now a documented category with a name and a fee award attached to it. See the Trademark Integrity Toolkit.
[ ] Put mediation on the table before the complaint, and price it: a single day with an experienced trademark neutral runs $6,000 to $15,000 and resolves a meaningful share of these disputes on a rebrand-and-transition-period structure.

Phase 10 — The demand-letter decision (Week 5)

[ ] Decide whether to send anything at all, and write down the reason either way.
- Why. A letter can resolve the matter, start the § 1111 damages clock, and build the enforcement record. It can also hand the recipient a declaratory judgment complaint in a forum of their choosing, and start your own laches clock running visibly.
- Authority. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (declaratory jurisdiction turns on whether the dispute is definite and concrete under all the circumstances); 28 U.S.C. §§ 2201-2202.
[ ] If speed and forum matter more than settlement, consider filing first and serving the complaint with a settlement proposal attached.
[ ] Calibrate the tone to the target, and remember the letter will be posted online.
- Trap. The reputational cost of an aggressive letter to a two-person business is real and asymmetric. Educational beats threatening when the recipient is small and not willful.
[ ] Draft the letter to be quoted: identify the registration and its status, describe the accused use with exhibit references, state the claims, state the demand with a date, and reserve all rights.
- Why. Vagueness is what makes a letter both ineffective and inflammatory. Model language and structure are in Sending an Effective Cease-and-Desist Letter and the Trademark Cease-and-Desist Letter template. Read Responding to a Cease-and-Desist Letter too — knowing the answer you will get is worth an hour.
[ ] Send it to counsel if you know the target is represented, and send it by a method that proves delivery.
[ ] Calendar the follow-up the day you send it, and follow up.
- Trap. An unanswered letter that sits for a year is the best acquiescence evidence a defendant will ever get. If you are not willing to follow through, do not send it.

Phase 11 — Go/no-go (Week 6)

[ ] Write a memorandum of no more than four pages: the claims that survived, the score on each confusion factor, the three worst defenses, the counterclaim exposure in dollars, the forum recommendation, the budget, and a recommendation stated as a verb.
[ ] Confirm every factual allegation you intend to plead has an exhibit or a witness behind it.
- Authority. Fed. R. Civ. P. 11(b)(2)-(3).
[ ] Get written authority from the named client decision-maker, with the budget stage they are approving stated explicitly.
[ ] Prepare and proofread the filing or letter against the record one last time: registration numbers, serial numbers, dates of first use, party names, exhibit citations, and the signature block.
- Trap. A transposed registration number in a complaint is the first thing opposing counsel quotes, and the first thing a judge remembers. Read the numbers aloud against the certificate.
[ ] Set a trigger date. Decide today what event or date converts a letter into a complaint, and docket it with a thirty-day buffer.
[ ] File or send, then save the stamped copy, the filing receipt, the ESTTA confirmation, or the delivery confirmation to the matter file the same day.

What Brindle actually did. The workup killed the emergency case. Kestrel had been selling for thirty-six months, Brindle's own watch notice from June 2023 was undeniable, the coexistence recital with Brindle Bakehouse was quotable, and the Ferry Landing license was naked. Counsel recorded the 2018 assignment on 11 March 2026, papered a quality-control amendment with Ferry Landing, drafted a § 14 petition to cancel Kestrel's Class 30 registration to hold as leverage, and sent a measured demand letter on 20 March 2026 that started the § 1111 clock. Kestrel's counsel called eleven days later. The matter settled in July on a phased rebrand with a nine-month sell-off, transfer of both domains, and a keyword-bidding covenant. Total cost: $61,400 against a $610,000 trial estimate. The client was disappointed for about a month.

Common Mistakes

Suing before recording the assignment. The chain-of-title gap is found by the defendant, at the worst moment.
Never having used the ® symbol and not noticing. Section 1111 quietly deletes the monetary case.
Pleading dilution because the mark feels important. Nationwide fame under 15 U.S.C. § 1125(c)(2)(A) is a high bar, and a dead count taints the live ones.
Filing a TTAB opposition as a cheap first move. Under B&B Hardware, the Board's confusion finding can follow you into court.
Letting marketing commission the survey. No privilege, no do-over, and the bad number gets produced.
Asking the client when they first learned of the infringement instead of searching for it. The answer is in the shared mailbox, and opposing counsel will find it.
Sending an aggressive letter to a defendant with declaratory-judgment counsel on retainer. You have just been sued in their district.
Ignoring the counterclaim math. A cancellation counterclaim is frequently worth more than your infringement claim — which is why weak-looking defendants settle hard.
Treating the label copyright as an afterthought. Timing under 17 U.S.C. § 412 decides statutory damages and fees, and cannot be fixed retroactively.
Skipping collectibility. Injunction cases and damages cases are budgeted and staffed differently.
Naming the trade name instead of the entity. Amend, re-serve, explain.
Sending the letter and then doing nothing for a year. That is how acquiescence is built.

Deadlines at a Glance

| Event | Clock | Authority | | --- | --- | --- | | Oppose a published application | 30 days from publication; extensions available | 37 C.F.R. §§ 2.101(c), 2.102 | | Extension of time to oppose | First 30 days free; 90 days for $200; final 60 days for $500 | 37 C.F.R. §§ 2.102(c), 2.6(a)(22) | | Answer a TTAB notice of opposition or petition | 40 days from the institution order | 37 C.F.R. § 2.106(a); TBMP § 310 | | Cancel on most grounds | Within 5 years of registration | 15 U.S.C. § 1064(1) | | Cancel for abandonment, genericness, fraud, functionality | No time limit | 15 U.S.C. § 1064(3) | | Prima facie abandonment | 3 consecutive years of non-use | 15 U.S.C. § 1127 | | Monetary recovery without ® | Only from the date of actual notice | 15 U.S.C. § 1111 | | Laches presumption | Analogous state limitations period, typically 2-6 years | Kason Indus., 120 F.3d at 1203 | | UDRP response | 20 days from commencement | UDRP Rules, R. 5(a) | | Service of the summons and complaint | 90 days from filing (not applicable abroad) | Fed. R. Civ. P. 4(m) | | TRO without notice | Expires in 14 days unless extended for good cause | Fed. R. Civ. P. 65(b)(2) | | Election of statutory damages (counterfeiting) | Any time before final judgment | 15 U.S.C. § 1117(c) |