Trademark Dilution Claim Checklist: Proving Fame, Association, and Harm

By Casey Scott McKay · 2026-04-08

This checklist runs a federal dilution matter under 15 U.S.C. § 1125(c) from the intake fame audit to the final decree, in eleven phases a team can work top to bottom. Phase 1 is a go/no-go gate that should stop most claims before they are pleaded, because dilution fame is binary and almost no mark clears it. The middle phases fix standing and the fame date, assemble the fame evidence package by statutory factor and evidentiary vehicle, plead the count so it survives Rule 12(b)(6), and run discovery and two surveys aimed at association rather than confusion. Later phases handle the preliminary injunction problem created by the willfulness condition in 15 U.S.C. § 1116(a), the decree terms that actually stop dilution, and settlement provisions that do not damage the mark. Phase 11 reverses the file and sequences the defense from the register check under § 1125(c)(6) onward, and every phase flags the TTAB variant — the different fame date, the five-year cancellation window, and the 180-day ceiling on extensions of time to oppose.

IP and Technology > Trademarks | Checklist | Published 8 April 2026 - Updated 12 July 2026 | Casey Scott McKay - marksy.us

Summary. This checklist runs a federal dilution matter under 15 U.S.C. § 1125(c) from the intake fame audit to the final decree, in eleven phases a team can work top to bottom. Phase 1 is a go/no-go gate that should stop most claims before they are pleaded, because dilution fame is binary and almost no mark clears it. The middle phases fix standing and the fame date, assemble the fame evidence package by statutory factor and evidentiary vehicle, plead the count so it survives Rule 12(b)(6), and run discovery and two surveys aimed at association rather than confusion. Later phases handle the preliminary injunction problem created by the willfulness condition in 15 U.S.C. § 1116(a), the decree terms that actually stop dilution, and settlement provisions that do not damage the mark. Phase 11 reverses the file and sequences the defense from the register check under § 1125(c)(6) onward, and every phase flags the TTAB variant — the different fame date, the five-year cancellation window, and the 180-day ceiling on extensions of time to oppose.

Keywords: dilution claim checklist · fame audit · section 43(c) checklist · famous mark evidence · brand tracking study · actual association survey · dilution pleading checklist · tarnishment proof · timing of fame · willful dilution · ttab dilution opposition · extension of time to oppose · dilution defense sequence · substantial exclusivity · fame survey universe

What this checklist is for

It runs one federal dilution claim — 15 U.S.C. § 1125(c), blurring or tarnishment — from intake to decree, and it runs the mirror-image defense. Work it in order. Phase 1 is a gate, and stopping there is a result, not a failure.

Who should use it. Litigators and in-house counsel with a brand that may be famous and a junior user the confusion claim cannot reach, plus defense counsel just served with a § 43(c) count.

What it is not. It does not teach doctrine. The elements, the fame and blurring factors, and what Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), did to the statutory exclusions are in Trademark Dilution Under the TDRA. The reasoning behind each step, with model pleading paragraphs, is in Bringing and Defending a Federal Dilution Claim.

What you'll need. Every ordinary-course brand-tracking wave the client owns, at report level; U.S. spend and revenue by year, split from non-U.S. figures; a TSDR pull for the family plus assignment records; the accused mark's file data; a first-use investigation on the defendant; a survey budget.

| Phase | What it decides | Elapsed | | --- | --- | --- | | 1. Threshold fame audit | Whether a § 43(c) count belongs here at all | Days 1-10 | | 2. Standing, title, and the clock | Whether the right plaintiff can sue on the right date | Days 5-20 | | 3. Forum and vehicle | District court, the Board, or both | Days 10-25 | | 4. Fame evidence package | What the fame case is made of, and how it gets in | Weeks 2-10 | | 5. Pre-suit: hold, capture, demand | Whether it settles, and what willfulness looks like | Weeks 2-8 | | 6. Plead the count | Whether it survives Rule 12(b)(6) without amendment | Weeks 6-12 | | 7. Discovery built for dilution | Intent, association, inferiority, exclusivity | Months 3-14 | | 8. Surveys and experts | The two documents that decide the case | Months 3-15 | | 9. Motions, injunctions, trial posture | Whether anyone reaches trial | Months 6-30 | | 10. Remedies, decree, settlement | What the win is actually worth | Months 12-36 | | 11. The defense checklist | The other chair, sequenced by cost | Day 1 onward |

The matter carried through this checklist. Northlight Outdoor, Inc. v. Northlight Vapor LLC, file NORTH-0042. Northlight Outdoor: Boulder outdoor apparel since 1961, FY2025 U.S. revenue $3.8 billion, $47 billion cumulative U.S. sales since 1995, advertising averaging $190 million a year for two decades, on the Principal Register since 12 March 1968, quarterly brand tracking since 2004 never below 68% aided awareness. Northlight Vapor: formed in Tampa May 2024 by Dana Ruiz, intent-to-use application for NORTHLIGHT for electronic cigarettes filed 3 June 2024, launched 12 August 2024 into 900 convenience stores, published 18 February 2026, launch copy "The legendary Northlight name, now in vapor." Ruiz ran Northlight Smoke Shop from 2009 to 2016. The counter-example is Brindle & Co., the Portland cold-brew roaster from the companion article — $14.2 million across three states, and no claim whatsoever.

Phase 1 — Threshold fame audit

[ ] Read every general-population awareness number the client already owns, at wave-report level. Ordinary-course tracking is the most persuasive fame evidence there is. Mattel, Inc. v. MGA Ent., Inc., 782 F. Supp. 2d 911, 1011 (C.D. Cal. 2011).
[ ] Apply the go/no-go rule: aided awareness at or above roughly 60% in a nationally representative adult sample keeps the claim alive; 30-55% kills it; no number means buy a $12,000-$20,000 screening survey or drop the count.
- Authority. § 1125(c)(2)(A)(iii); 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:106 (5th ed.) (proposing a 75% floor); Stone Brewing Co. v. MillerCoors LLC, 445 F. Supp. 3d 1113, 1147-48 (S.D. Cal. 2020).
- Trap. Marketing will hand you a category-purchaser number. Wrong universe — that sank the 41.2% figure in T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 930-31 (S.D. Tex. 2014).
[ ] Classify the recognition as general or sectoral, in writing. The TDRA abolished niche fame: category leadership, trade-press dominance, regional saturation, and fandom all fail. Bd. of Regents v. KST Elec., 550 F. Supp. 2d 657, 678 (W.D. Tex. 2008).
[ ] Pick the fame year you can defend with a document, and write "no later than [year]" on the memo.
[ ] Pull the crowded field: every live and dead filing containing the mark or a formative, plus common-law hits. Substantial exclusivity is the third blurring factor, and third-party use cuts against fame. Vallavista Corp. v. Amazon.com, Inc., 657 F. Supp. 2d 1132, 1139 (N.D. Cal. 2008).
[ ] Check whether the defendant holds a Principal Register registration — if so, the state dilution count is barred outright. § 1125(c)(6); Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 424 (6th Cir. 1999).
[ ] Write a two-page go/no-go memo, get written client sign-off, and date it.
- Trap. A count pleaded on a merely strong mark costs more than it earns: the defendant wins the motion and your confusion count inherits the doubt. The Brindle memo said no — see Sending an Effective Cease-and-Desist Letter and the Pre-Litigation Enforcement Checklist.

Done looks like this. NORTH-0042 memo, 26 February 2026: Q1 wave, n=1,200 U.S. adults, aided 81%, unaided 46%; fame pleaded "no later than 1994"; 214 register hits screened, six material third-party users. Go.

Phase 2 — Standing, chain of title, and the clock

[ ] Confirm the entity in your caption is the record owner in USPTO assignment records, not a licensee or sibling operating company. Only the owner may sue. Upper Deck Co. v. Panini Am., Inc., 533 F. Supp. 3d 956, 965 (S.D. Cal. 2021).
- Trap. A confirmatory assignment recorded after filing fixes title, not the standing defect. Record first — Trademarks in the Deal; Assignment Recordal Checklist.
[ ] Build the year-by-year fame exhibit before you commit to a date: spend and revenue by year, door counts, the tracking series, the media file.
[ ] Order a dated first-use investigation: entity filings, WHOIS history, archived captures, marketplace seller history, predecessors. The defendant's use must postdate fame, § 1125(c)(1); Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 171-73 (4th Cir. 2012), was remanded on exactly that gap.
- Trap. Ruiz's 2009-2016 smoke shop must surface before filing. It likely fails as continuity — different goods, different channels, an eight-year gap — but it belongs in your pre-suit memo, not the answer.
[ ] Docket the three dates that end claims: the accused registration date plus five years, the 6 October 2006 cut-off for money under § 1125(c)(5)(A), and the opposition deadline. See Docketing Deadlines.
[ ] For unregistered trade dress, add the three § 1125(c)(4) burdens: non-functionality, fame of the dress as a whole, and fame separate from any registered marks inside it. Register it if you can — Protecting Trade Dress.

Phase 3 — Forum and vehicle

[ ] Start from the remedy. Only a district court can stop sales; the Board decides registrability and nothing else. 28 U.S.C. §§ 1331, 1338(a); 15 U.S.C. §§ 1063(a), 1064, 1119. See Federal Court vs. TTAB.
[ ] File both where there is a published application and a launched product; the Board will ordinarily suspend the opposition once the civil action is filed. TBMP § 510.02(a).
[ ] Confirm dilution is available at all — it is never an ex parte refusal. 15 U.S.C. § 1052(f); TBMP § 309.03(c).
- Trap. The fame an examiner weighs under TMEP § 1207.01(d)(ix) is du Pont fame — a sliding scale inside a confusion analysis. Dilution fame is binary and far higher. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1373 (Fed. Cir. 2012).
[ ] Work the extension-of-time ladder deliberately instead of defaulting to the free thirty days. 37 C.F.R. § 2.102(c); fees at § 2.6.
- Worked. Published 18 February 2026, opposition due 20 March. A first thirty-day request (no cause, no fee) moved it to 19 April; sixty more for good cause at $200 moved it to 18 June; a final consented sixty days at $400 moved it to 17 August 2026 — the 180-day ceiling exactly.
[ ] File through ESTTA, select both wizard grounds ("Dilution by blurring" and "Dilution by tarnishment," keyed to § 43(c)), and pay $600 per class. Format under 37 C.F.R. § 2.126 — PDF, letter size, 11-point minimum. See How to File a Notice of Opposition and the TTAB Opposition Filing Checklist.
[ ] For a registered mark, check the five-year window first — dilution is not a § 1064 "any time" ground. 15 U.S.C. § 1064(1); see Opposition vs. Cancellation and Filing a Petition for Cancellation.

Phase 4 — Build the fame evidence package

Open a binder with a tab per statutory factor, and assign every exhibit a custodian and an evidentiary vehicle the day it enters. Fame packages fail on admissibility more often than on substance.

[ ] Tab A, tracking. Every wave, questionnaire, raw data file, and vendor methodology memo, in as business records under Fed. R. Evid. 803(6) with a Rule 902(11) certification.
- Trap. Produce the soft waves. Opposing counsel will demand the complete series, and a series with holes is worth less than a series with a dip you explain yourself.
[ ] Tab B, advertising. U.S. spend by year, channel, and DMA as a Fed. R. Evid. 1006 summary with invoices available, paired with agency reach-and-frequency reports.
- Trap. Spend proves budget, not recognition, Coach, 668 F.3d at 1375 — and global spend presented as U.S. spend is the most common exhibit defect in dilution practice.
[ ] Tab C, unsolicited media. Offered to show extent of publicity, not for truth; the statute counts publicity by the owner "or third parties." § 1125(c)(2)(A)(i); Eli Lilly & Co. v. Nat. Answers, Inc., 233 F.3d 456, 469 (7th Cir. 2000).
[ ] Tab D, sales. U.S. dollars and units by year, channel, and state as a Rule 1006 summary with a finance declaration. Courts credited $3 billion cumulative nationwide in PODS Enters., LLC v. U-Haul Int'l, Inc., 126 F. Supp. 3d 1263, 1277 (M.D. Fla. 2015) — but modest volume does not defeat fame where scarcity is the proposition, Herman Miller, Inc. v. Belnick LLC, 510 F. Supp. 3d 1342, 1349 (N.D. Ga. 2021).
[ ] Tab E, registrations. Certified status-and-title copies, offered for distinctiveness and factor (iv), never for fame, which "cannot be inferred merely from the fact that a mark is one of many on the federal register." Roederer v. J. Garcia Carrion, S.A., 732 F. Supp. 2d 836, 880 (D. Minn. 2010).
[ ] Tab F, exclusivity. The watch log, the enforcement history, and every coexistence, consent, and settlement agreement touching the mark. Read them before relying on factor (iii). See Trademark Watch Services.
[ ] Tab G, cultural footprint. Sponsorships, endorsements, awards, and popular-culture references, each captured with URL and access date on its face.
[ ] Map each tab to its Board vehicle now if the forum is the TTAB, because there is no live testimony there.
- Authority. Registrations, 37 C.F.R. § 2.122(d); publications and internet materials, § 2.122(e)(2), Safer, Inc. v. OMS Invs., Inc., 94 U.S.P.Q.2d 1031 (T.T.A.B. 2010); sales, spend, and tracking by testimony declaration, § 2.123. See the TTAB Practice Toolkit.
[ ] For a descriptive mark, build the secondary-meaning record in parallel; it overlaps almost perfectly with a § 2(f) showing. TMEP § 1212; Secondary Meaning Evidence Checklist.

Phase 5 — Pre-suit: hold, capture, demand

[ ] Issue the litigation hold on day one to marketing, consumer insights, e-commerce, legal, and the agency of record.
- Trap. The tracking series is your best evidence and, in the weak waves, the defendant's. A routine purge after the hold attaches is the expensive kind of housekeeping.
[ ] Capture the defendant's footprint yourself — site, product pages, packaging, shelf sets, social posts — each with a capture date and a declarant. Launch copy disappears: "The legendary Northlight name, now in vapor" was gone a month after the demand letter.
[ ] Buy the product through an ordinary retail channel, photograph the unboxing, and log chain of custody. Tarnishment needs the unsavory context or the inferiority as a fact; a plaintiff who never produces the product loses the theory.
[ ] Send a demand letter with the fame numbers in it, unless you need surprise for a seizure or TRO.
- Trap. "Your use dilutes our famous mark," with no figures, invites a declaratory-judgment filing in a forum you did not pick. Numbers also fix knowledge as of a date certain, where § 1125(c)(5)(B) willfulness begins. Shell: Cease-and-Desist Letter Template.

Phase 6 — Plead the count

[ ] Plead distinctiveness in its own paragraph, separate from fame — a mark can be distinctive without being famous. Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 877 (9th Cir. 1999).
[ ] Plead the four fame factors as lettered subparagraphs, each carrying a real number and a source.
- Authority. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). "Plaintiff's mark is famous" is the threadbare recital Iqbal excludes. See Patagonia, Inc. v. Anheuser-Busch, LLC, 2019 WL 8754735, at *4 (C.D. Cal. Sept. 3, 2019).
[ ] Say who ran the recognition study, when, on what universe, with what result — and that it was ordinary-course. That subparagraph decides the motion. See DigitAlb, Sh.a v. Setplex, LLC, 284 F. Supp. 3d 547, 557 (S.D.N.Y. 2018).
[ ] Plead both dates — first use in commerce and application filing — so you never amend when the Board claim runs to the earlier one.
[ ] Plead blurring and tarnishment separately, with the negative context or the inferiority alleged as fact. § 1125(c)(2)(B), (C); Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 507 (2d Cir. 1996).
[ ] Plead willfulness only if you will prove it. It is the gateway to money under § 1125(c)(5)(B) and to the irreparable-harm presumption under 15 U.S.C. § 1116(a); plead it and abandon it and you surrender both.
[ ] Re-run the register search the morning you finalize the complaint, before adding any state count. A registration issued since Phase 1 makes that count an automatic motion. § 1125(c)(6).
[ ] Keep the dilution and confusion theories separate in the pleading and the brief; confusion usually carries the injunction. See Proving Likelihood of Confusion.

Phase 7 — Discovery built for dilution

[ ] Aim at the four things a dilution record needs and a confusion record does not: selection and knowledge, actual association in the wild, inferiority or unsavory context, and the defendant's third-party-use exhibit. Fed. R. Civ. P. 26(b)(1), 34.
[ ] Request all consumer inquiries, complaints, reviews, and social posts referring to both marks — where actual association turns up, and factor (vi) is the most probative. Bath & Body Works Brand Mgmt., Inc. v. Summit Ent., LLC, 7 F. Supp. 3d 385, 400-01 (S.D.N.Y. 2014).
[ ] Request the regulatory file where the goods are regulated — here, FDA correspondence and any premarket tobacco product application, which is the tarnishment exhibit. See The Lawful Use Requirement.
[ ] Demand every third-party mark the defendant will rely on, with documents showing extent, duration, and geographic scope — putting the burden of showing extent where the Board puts it. 7-Eleven, Inc. v. Wechsler, 83 U.S.P.Q.2d 1715 (T.T.A.B. 2007).
[ ] Notice a Fed. R. Civ. P. 30(b)(6) deposition on selection and adoption; knowledge of the plaintiff and when; first use and continuity including predecessors; sales by channel and geography; product composition and quality control.
[ ] Serve contention interrogatories: the basis for contending the mark was not famous as of your pleaded date; who selected the accused mark; first use per product; each exclusion asserted.
[ ] Subpoena the research vendor and the agency of record under Fed. R. Civ. P. 45 — they hold the raw data files, methodology memoranda, and reach-and-frequency reports the client's deck does not contain.
[ ] Get a two-tier protective order entered with the scheduling order. Fed. R. Civ. P. 26(c). At the Board the standard protective order applies automatically — Understanding TTAB Discovery and the Protective Order.
[ ] At the Board, calendar its limits instead: a 180-day discovery period, mandatory conference and initial disclosures, and seventy-five interrogatories, document requests, and admissions each. 37 C.F.R. § 2.120.

Phase 8 — Surveys and experts

[ ] Commission two surveys. They measure different things, on different universes, with different stimuli, and neither can do the other's job.
[ ] Survey A, fame. Universe: a nationally representative sample of U.S. adults, screened for nothing but age and, for age-restricted goods, eligibility. Never category purchasers.
- Trap. The universe error destroyed the survey in T-Mobile, 991 F. Supp. 2d at 930-31. Sequence unaided awareness, then unaided source attribution, then aided recognition with a control term — and report the unaided number even when it is unflattering.
[ ] Survey B, actual association. Universe: consumers of the defendant's goods. Stimulus: the defendant's mark exactly as consumers meet it, packaging and trade dress intact.
- Why. The most consequential design choice in a dilution case. Starbucks lost on it: a telephone survey recited "Charbucks" aloud, stripped of the packaging. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 736 F.3d 198, 209-10 (2d Cir. 2013). Compare Nike, Inc. v. Nikepal Int'l, Inc., 2007 WL 2782030, at *8 (E.D. Cal. Sept. 18, 2007).
- Trap. Do not ask about confusion. Proof that consumers are unconfused does not defeat association. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 109 (2d Cir. 2009).
[ ] Field a fifty-respondent pilot of Survey B first. If respondents fixate on the junior mark's descriptive element rather than the shared one, the association case is thinner than the pleadings assumed.
[ ] Offer any impairment module as corroboration, not load-bearing proof. No accepted methodology measures degradation of distinctiveness as distinct from association, yet the Fourth and Seventh Circuits treat impairment as independent. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 267 (4th Cir. 2007); Hugunin v. Land O'Lakes, Inc., 815 F.3d 1064, 1067 (7th Cir. 2016).
[ ] Keep the questionnaire, screener, coding manual, verbatims, and data files ready to produce, and build both instruments with the Rule 702 motion drafted in your head. Fed. R. Evid. 702 as amended 1 December 2023. See Commissioning and Attacking a Trademark Survey.
[ ] Start both no later than six months before the expert deadline. Fed. R. Civ. P. 26(a)(2)(B), (D)(i); at the Board, disclose thirty days before the close of discovery, 37 C.F.R. § 2.120(a)(2).

Done looks like this. Survey A: n=810 U.S. adults 21+, aided 79%, unaided 44%, control 3%. Survey B: n=604 adult disposable-vape purchasers shown the retail package on a shelf set; 61% named an outdoor-apparel company, net of a 6% control cell.

Phase 9 — Motions, injunctions, and trial posture

[ ] Before drafting a preliminary injunction motion, confirm you can show likely willfulness, not merely likely success.
- Why. The Trademark Modernization Act presumption of irreparable harm attaches to a § 1125(a) or (d) violation, or a willful § 1125(c) violation. A confusion plaintiff gets it on likelihood of success; you do not. 15 U.S.C. § 1116(a); eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).
- Trap. A denial "without prejudice" becomes the defendant's summary judgment brief. If the fame survey is not fielded, do not move.
[ ] Consider Fed. R. Civ. P. 65(a)(2) consolidation with expedited discovery instead — where the only reliable remedy is an injunction, an accelerated trial beats litigating fame twice.
[ ] If you move, budget the Rule 65(c) bond against the defendant's projected gross margin, and remember a TRO issued without notice expires in fourteen days. Fed. R. Civ. P. 65(b)(2). See the Preliminary Injunction Motion Checklist.
[ ] Move for partial summary judgment on fame and distinctiveness alone. Blurring is fact-bound, Starbucks, 736 F.3d at 207, but tarnishment is granted where the context is flagrant, Gianni Versace, S.p.A. v. Versace 19.69, 328 F. Supp. 3d 1007, 1024 (N.D. Cal. 2018).
[ ] Choose bench or jury deliberately. Dilution seeking only an injunction is equitable; the money claim brings a jury right with it. Dropping damages before the pretrial order buys a judge who will read the survey report.
[ ] Draft the instructions yourself — most circuits have no pattern dilution charge — and fight three issues: impairment as a separate step; how similar is similar enough, Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1172 (9th Cir. 2011), against Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 163 (4th Cir. 2014); and intent, which raises no presumption of actual association.
[ ] Put fame on first at trial, tracking witness and survey expert back to back. A fact-finder convinced on fame forgives a thin association showing; the reverse never happens.
[ ] At the Board, propose Accelerated Case Resolution where fame is strong and the applicant has not used the mark. TBMP § 702.04. The sixth blurring factor also goes neutral against an unused ITU application. Nat'l Pork Bd. v. Supreme Lobster & Seafood Co., 96 U.S.P.Q.2d 1479 (T.T.A.B. 2010).

Phase 10 — Remedies, decree, and settlement

[ ] Draft the decree by category, not by SKU: prohibit the mark and any dilutive variant on the enjoined goods, identified by class and product description.
[ ] Build register relief into the decree — abandonment or assignment of any pending application, express abandonment of any registration, and a 15 U.S.C. § 1119 provision directing the Director to act.
[ ] Add transfer of every domain and social handle, a thirty-to-ninety-day channel phase-out keyed to the defendant's inventory turn, a compliance certification, and retained jurisdiction.
[ ] Refuse a disclaimer-based remedy — disclaimers address confusion and do nothing about the association that erodes distinctiveness, which is the entire injury.
[ ] Price the case as an injunction case and treat money as a contingency.
- Authority. Section 1125(c)(5)(B) conditions all monetary relief on willful intent, and Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212, 218 (2020), left that untouched. With willfulness proved, §§ 1117 and 1118 open up, plus fees under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014). See the Trademark Monetary Recovery Checklist.
[ ] Where tarnishment is the real grievance, negotiate a context covenant — "never with age-restricted, regulated, or adult goods" closes cases that "stop entirely" cannot.
[ ] Refuse a broad consent to registration in a related class; if you must consent, confine it by class, channel, geography, and presentation.
- Trap. Today's coexistence consent is tomorrow's exhibit on substantial exclusivity, and the next junior user will cite it. Start from the Coexistence Agreement Template.
[ ] Write the watch obligation into the closing memo — fame decays through toleration. See the Brand Enforcement Toolkit.

Phase 11 — The defense checklist

Run these in order; it is the order that resolves cases cheapest.

[ ] Day one, check whether your client holds a Principal Register registration for the accused mark, and move to dismiss any state dilution count if it does. § 1125(c)(6); Jet, 165 F.3d at 424.
[ ] Attack fame on the pleadings if the complaint alleges it conclusorily or supports it only with sales and registrations. If it pleads the factors with numbers, save the motion and take the discovery.
[ ] Buy your own general-population omnibus survey. A $15,000 instrument showing aided awareness of 34% turns an absence-of-proof argument into an affirmative one. Green v. Fornario, 486 F.3d 100, 105 (3d Cir. 2007); PetConnect Rescue, Inc. v. Salinas, 2023 WL 2026546, at *16 (S.D. Cal. Feb. 15, 2023).
[ ] Reconstruct your client's first use with dated artifacts, and push the plaintiff's fame date later using its own tracking series. A plaintiff pleading fame "no later than 1994" with no measurement before 2004 has a ten-year gap. Rosetta Stone, 676 F.3d at 171-73.
[ ] Locate your circuit on the source-identifier split before briefing use in commerce.
- Authority. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 111-12 (2d Cir. 2010), and Nat'l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 536 (5th Cir. 2012), put referential use outside the statute; Rosetta Stone, 676 F.3d at 168-70, rejects any such requirement. See the Online Brand Protection Toolkit.
[ ] Plead every statutory exclusion that fits and brief the best one. These end the claim; they do not weigh in a balance.
- Authority. § 1125(c)(3)(A) (fair use — nominative, descriptive, comparative advertising, parody — but only "other than as a designation of source"); § 1125(c)(3)(B) (news reporting); § 1125(c)(3)(C) (noncommercial use). After Jack Daniel's, 599 U.S. at 161-63, a source-identifying parody forfeits both. See Raising a Trademark Fair Use Defense.
- Trap. The noncommercial-use exclusion is unavailable at the Board: registration presupposes use in commerce. Am. Express Mktg. & Dev. Corp. v. Gilad Dev. Corp., 94 U.S.P.Q.2d 1294 (T.T.A.B. 2010).
[ ] Hold the merits in reserve for when the exclusions fall away: a successful parody reinforces rather than impairs distinctiveness, Haute Diggity Dog, 507 F.3d at 267, and a quality product creates no negative association, Starbucks, 588 F.3d at 111.
[ ] Take the discovery that produces the plaintiff's watch log, coexistence agreements, decisions not to object, and prior USPTO statements about the mark's strength — substantial exclusivity is where a famous mark proves less exclusive than the complaint says.
[ ] Assess laches and acquiescence, and consider a § 1119 cancellation counterclaim for abandonment or genericness. 15 U.S.C. §§ 1119, 1127; see the Trademark Abandonment Evidence Checklist and the Trademark Defenses Toolkit.

Common Mistakes

Pleading dilution because the mark is strong. Strength is a continuum; fame is a switch. Coach, 668 F.3d at 1373.
Offering advertising spend as recognition evidence. Budget is not awareness. Coach, 668 F.3d at 1375.
Surveying the wrong universe. Fame belongs to the general consuming public; association belongs to the defendant's consumers.
Showing the junior mark stripped of its packaging. That choice, not the merits, is what Starbucks lost on. 736 F.3d at 209-10.
Never fixing the fame date. Fame must precede the defendant's use. Rosetta Stone, 676 F.3d at 171-73.
Building the preliminary injunction on § 43(c). The § 1116(a) presumption requires likely willfulness here.
Pleading a state count against a federally registered defendant. Section 1125(c)(6) is a complete bar.
Alleging tarnishment without producing the product. Negative context is an element, not an adjective.
Treating the injunction as a route to damages. Budget it as an injunction case, because that is what it is.

Deadlines at a Glance

| Trigger | Deadline | Authority | | --- | --- | --- | | Publication in the Official Gazette | 30 days to oppose or extend | 15 U.S.C. § 1063(a); 37 C.F.R. § 2.101(c) | | First extension of time to oppose | +30 days, no cause, no fee — or +90 days for good cause with the fee | 37 C.F.R. § 2.102(c)(1); fees at § 2.6 | | Second request after a 30-day extension | +60 days for good cause, $200 per application | 37 C.F.R. § 2.102(c)(2) | | Final request after 90 days total | +60 days, on consent or extraordinary circumstances, $400 | 37 C.F.R. § 2.102(c)(3) | | Ceiling on all extensions | 180 days from publication, no exceptions | 37 C.F.R. § 2.102(c) | | Registration of the accused mark | 5 years to petition to cancel on dilution grounds | 15 U.S.C. § 1064(1) | | Opposition or petition to cancel | $600 per class, through ESTTA | 37 C.F.R. §§ 2.6, 2.101, 2.111 | | Service of a federal complaint | Answer in 21 days, or 60 days after a Rule 4(d) waiver request | Fed. R. Civ. P. 12(a)(1)(A) | | TRO issued without notice | Expires in 14 days; one like extension | Fed. R. Civ. P. 65(b)(2) | | Expert disclosures, district court | 90 days before trial absent a scheduling order | Fed. R. Civ. P. 26(a)(2)(D) | | Board discovery period | 180 days; expert disclosure 30 days before its close | 37 C.F.R. § 2.120(a)(2) | | Monetary relief under § 43(c) | Only for uses commencing after 6 October 2006 | 15 U.S.C. § 1125(c)(5)(A) |

Government fees move. Confirm each amount against the current USPTO schedule, and the civil filing fee with the clerk — the $350 statutory charge under 28 U.S.C. § 1914(a) plus the Judicial Conference administrative fee.