Trademark Monetary Recovery Checklist: Proof of Profits, Damages, Corrective Advertising, and Fees

By Casey Scott McKay · 2025-11-17

This checklist is the working sequence for the money side of a federal trademark case, twelve phases from the intake call to collected funds. It starts where the recovery is actually won or lost — the Section 1111 registration-notice audit, the entity map that Dewberry made a caption decision, and the litigation hold that has to cover the client's own marketing spend — then moves through pleading the monetary theories and choosing between a judge and a jury, the Rule 26(a)(1)(A)(iii) computation that most plaintiffs botch, transaction-level financial discovery and third-party subpoenas, the Rule 30(b)(6) deposition that locks the gross-revenue number, expert scoping and the apportionment fight, building corrective advertising from invoices instead of percentages, and the election among profits, damages, trebling, and Section 1117(c) statutory damages. It closes with the proposed findings that survive appellate review, the lodestar fee petition and its fourteen-day deadline, the AO 133 bill of costs, and collection through Rule 69, Section 1963 registration, and the Section 523(a)(6) discharge fight. Every phase carries the Cascade Wick matter forward with real numbers, and a deadlines table collects the dates that end claims.

IP and Technology > Trademarks | Checklist | Published 17 November 2025 - Updated 20 March 2026 | Casey Scott McKay - marksy.us

Summary. The working sequence for the money side of a federal trademark case, in twelve phases from the intake call to collected funds: the § 1111 notice audit and entity map that decide whether recovery is available at all, the litigation hold, pleading and the jury choice, the Rule 26(a)(1)(A)(iii) computation, transaction-level financial discovery and third-party subpoenas, the Rule 30(b)(6) deposition that locks the gross number, expert scoping and apportionment, corrective advertising built from invoices, the election among profits, damages, trebling, and § 1117(c) statutory damages, proposed findings that survive review, the lodestar fee petition and its fourteen-day deadline, the AO 133 bill of costs, and collection through Rule 69, § 1963 registration, and the § 523(a)(6) discharge fight. One matter — Cascade Wick — is carried through with numbers.

Keywords: trademark damages checklist · disgorgement of profits · 15 u.s.c. 1117 · section 1111 notice · rule 26 damages computation · financial discovery · rule 30(b)(6) financial deposition · apportionment burden · corrective advertising · big o tire · reasonable royalty · statutory damages election · lodestar fee petition · rule 54(d)(2) · bill of costs ao 133 · rule 69 asset discovery · post-judgment interest · romag · dewberry · section 523(a)(6)

What this checklist is for

Someone has to answer the question the client actually asked: what does this pay. This is the sequence that answers it, from the intake call to money in the trust account.

Work it in order. The items in Phases 1 and 2 are what make Phase 11 possible, and nearly every expensive failure in trademark damages practice is an omission from the first three weeks — a missing ® on a wholesale line sheet, an unnamed LLC, a demand letter sent by email with no delivery proof.

Who should use it. Plaintiff's counsel building a monetary case; defense counsel running the same list in reverse to find the holes; in-house counsel pricing an enforcement decision before outside counsel is engaged. The doctrine behind every item is in What a Trademark Win Is Worth; the reasoning, model language, and cost tables are in Proving Trademark Damages and Disgorging Profits. This document does not re-teach either. It tells you what to do next.

What you need before you start.

The registration certificate, a TSDR status-and-documents PDF pulled the day you open the file, and the § 8, § 9, and § 15 filing history.
Five years of the client's own sales data by channel and by SKU, and its complete advertising spend by year.
Every image of the mark as used: packaging, labels, website product pages, marketplace listings, line sheets, catalogs, invoices, trade-show photos — with dates.
The complete pre-suit correspondence file, including delivery receipts.
A budget authority and a written answer to one question: is the client's objective to stop this, to be paid, or both. Those are different cases.

| Phase | What it produces | Typical window | |---|---|---| | 1. Damages theory at intake | A written theory memo and a go/no-go on money | Days 1–10 | | 2. Preservation and the § 1111 audit | The recoverable period, the entity map, the hold | Days 1–21 | | 3. Pleading the money | A prayer that preserves every theory; the factfinder choice | Filing | | 4. Rule 26 damages computation | A disclosure that survives Rule 37(c)(1) | Day 14 after Rule 26(f) | | 5. Financial discovery | Transaction-level revenue data and the deduction case | Days 30–180 | | 6. Rule 30(b)(6) financial deposition | Gross revenue as an admission | Days 120–210 | | 7. Experts and apportionment | Rebuttal report or a Rule 1006 summary | Days 150–270 | | 8. Corrective advertising and royalty | Invoices, a media plan, or a dropped theory | Days 60–270 | | 9. Election of remedies | One number, chosen in writing | Before final judgment | | 10. Trial proof and findings | Findings an appellate panel will not disturb | Trial | | 11. Fee petition and costs | Lodestar motion and AO 133 bill of costs | 14 days after judgment | | 12. Collection | Money | 60 days – 18 months |

The worked example. Cascade Wick Co., a Portland candle maker, owns an incontestable registration for CASCADE WICK (Reg. No. 4,113,882, Class 4, candles and home fragrance). Northbound Candle Works LLC of Boise launched a NORTHBOUND CASCADE line in March 2024, selling on Amazon and through roughly 140 independent retailers. Cascade Wick learned of it in September 2024, sent a demand letter on 30 September 2024, and filed in the District of Oregon on 9 October 2025. Nineteen months of infringing sales; $4,240,000 in gross revenue on the accused line. Each phase below shows what Cascade Wick did at that step and what it was worth.

Phase 1 — Set the damages theory before you set the fee arrangement

[ ] Ask the client, on the intake call, whether the objective is stopping the conduct, being paid, or both — and write the answer in the file.
- Why. In the ordinary infringement case the plaintiff gets an injunction and nothing else. Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 131 (1947). A client told this on day one does not fire you in month fourteen.
[ ] Identify which of the four monetary theories the facts can actually carry: disgorgement of profits, lost profits, corrective advertising, reasonable royalty.
- Trap. Pleading all four and proving none is the most common route to an injunction plus a fee bill. Each theory needs different records and a different expert.
[ ] Run the royalty gate now, in three questions: was the defendant a former licensee or franchisee; does the client license the mark to anyone else at a known rate; did the defendant propose a royalty-bearing license the client rejected. Three noes means you have no royalty case.
- Authority. A&H Sportswear Co. v. Victoria's Secret Stores, Inc., 166 F.3d 197, 208 (3d Cir. 1999); La Quinta Corp. v. Heartland Props. LLC, 603 F.3d 327, 342-45 (6th Cir. 2010); Marketquest Grp., Inc. v. BIC Corp., 316 F. Supp. 3d 1234, 1300-01 (S.D. Cal. 2018).
[ ] Pull the client's own sales history by month for the twenty-four months before and every month during the infringement.
- Why. If the client's sales rose throughout, the lost-profits theory is probably gone and disgorgement plus corrective advertising is the case. See 4 Pillar Dynasty LLC v. New York & Co., 933 F.3d 202 (2d Cir. 2019).
[ ] Build a pre-suit revenue estimate from public data — marketplace review counts times a 1–3% review rate times average price, best-seller-rank sampling, retailer count times category reorder value — and put a range in the engagement letter.
[ ] Check the defendant's culpability evidence before you price the case: prior contact, a clearance search skipped, a broken promise to stop.
- Authority. Mental state is "a highly important consideration" in whether profits are awarded at all. Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212, 219 (2020).
[ ] Price the downside. Since Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), fee exposure runs both ways, and a weak mark asserted against a non-competing defendant is a fee award waiting to happen. Compare against the pre-suit route in the Pre-Litigation Enforcement Checklist.
[ ] Confirm the forum can pay. The TTAB cannot award a dollar — see Federal Court vs. TTAB — and a UDRP proceeding recovers a domain and nothing else, as compared in UDRP vs. Federal Lawsuit.

Cascade Wick: disgorgement plus corrective advertising, no royalty (three noes), lost profits held in reserve. Pre-suit estimate $3.6M against an actual $4.24M — an 18% miss, and close enough to justify the budget.

Phase 2 — Preserve the record and audit the § 1111 notice

[ ] Audit every use of the mark for the registration symbol, and screenshot each with a date: the goods themselves, packaging, website product pages, every marketplace listing including the bullet copy, wholesale line sheets, the last three catalogs, invoices, and trade-show booths.
- Why. A registrant that gave neither statutory notice nor actual notice recovers no profits and no damages for the pre-notice period. 15 U.S.C. §§ 1072, 1111; TMEP § 906.
- Trap. You cannot escape § 1111 by repleading the same facts as an unregistered-mark claim under 15 U.S.C. § 1125(a). GTFM, Inc. v. Solid Clothing, Inc., 215 F. Supp. 2d 273, 306 (S.D.N.Y. 2002); Coach, Inc. v. Asia Pac. Trading Co., 676 F. Supp. 2d 914, 925 (C.D. Cal. 2009).
[ ] Fix the notice defects this week, and document the date each was fixed.
[ ] Send the demand letter by a method that proves delivery, and keep the receipt. The date it lands is the start of the actual-notice period, and on a messy ® record it is the boundary of the recoverable damages. Draft it from Sending an Effective Cease-and-Desist Letter and the Cease-and-Desist Letter Template.
[ ] Map the entities before you draft the caption: Secretary of State filings in the state of formation and every operating state, UCC-1 financing statements, the marketplace seller-of-record, DBA and assumed-name filings, USPTO assignment records, the domain registrant, and the merchant descriptor on a test-purchase card statement.
- Why. "Defendant's profits" under 15 U.S.C. § 1117(a) means the named defendant's profits, not an affiliate's. Dewberry Grp., Inc. v. Dewberry Eng'rs Inc., 604 U.S. 321 (2025).
- Trap. You cannot add the entity holding the money after judgment. Peacock v. Thomas, 516 U.S. 349, 357 (1996). The structural questions are the same ones asked on the buy side in the Trademark Due Diligence Checklist.
[ ] Make three documented test purchases — marketplace, defendant's own site, a retailer — and keep the order confirmations, packing slips, shipping labels, and the goods in sealed evidence bags.
[ ] Issue a litigation hold that covers the client's marketing files, agency correspondence, media invoices, and customer-service tickets, not just the infringement evidence.
- Why. Those are the corrective advertising claim and the actual-confusion evidence. Counsel routinely hold the wrong custodians.
[ ] Capture the defendant's advertising while it is live: Meta and Google ad-library archives, retail media placements, and timestamped archives of every accused listing.
[ ] Decide whether preliminary relief is worth the Rule 65(c) bond, and calendar the decision — delay rebuts the presumption of irreparable harm under 15 U.S.C. § 1116(a). Run the Preliminary Injunction Motion Checklist if the answer is yes.

Cascade Wick: ® on the jars since 2019, but "Cascade Wick™" on the Amazon bullets and the 2024 line sheet until August 2024. That put $1,310,000 of Northbound's revenue at risk. The 30 September 2024 demand letter secured the remaining $2,930,000.

Phase 3 — Plead the money and pick the factfinder

[ ] Name every entity that touches the revenue, and plead alter ego with facts, not labels, in a closely held group.
[ ] Plead the monetary paragraphs separately and in the alternative: disgorgement under § 1117(a) including the "just sum" clause; actual damages including lost profits, goodwill, and corrective advertising; trebling under § 1117(a) or mandatory trebling under § 1117(b); a reserved § 1117(c) election; exceptional-case fees; costs; and prejudgment and post-judgment interest.
- Why. You will not know at filing which theory the evidence supports, and you elect later. Courts reject double recovery of both damages and profits for the same sales. United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1227-28 (10th Cir. 2000).
[ ] Choose the factfinder deliberately, and plead to match.
- Authority. Pure equitable disgorgement carries no jury right. Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343, 1354 (11th Cir. 2019); Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1074-76 (9th Cir. 2015). Profits pleaded as a proxy for lost sales are legal and jury-triable. Dairy Queen, Inc. v. Wood, 369 U.S. 469, 477-79 (1962).
- Trap. Demanding a jury under Fed. R. Civ. P. 38(b) out of habit, then trying a general-ledger overhead dispute to twelve people, is a choice you made without noticing.
[ ] Put the jury/bench allocation into the Fed. R. Civ. P. 26(f) report so it is settled before summary judgment; consider an advisory jury under Rule 39(c)(1) in a mixed case.
[ ] Do not plead a reasonable royalty the Phase 1 gate rejected, and do not plead corrective advertising the client will not actually spend.
- Why. Abandoned theories are facts a court weighs in the defendant's fee petition. See the Trademark Defenses Toolkit.
[ ] Pay the civil filing fee (currently $405 — 28 U.S.C. § 1914(a) plus the Judicial Conference administrative fee; confirm on the court's current schedule) and docket the Rule 26(f) date the moment the answer is filed. Calendaring discipline is the subject of Docketing Deadlines.
[ ] If the logo is also a registered copyrightable work, plead the parallel claim — separate statutory awards have been allowed for a single course of conduct remedying distinct injuries. Nintendo of Am., Inc. v. Dragon Pac. Int'l, 40 F.3d 1007, 1011 (9th Cir. 1994). See Copyright Infringement Complaint Checklist.

Phase 4 — File a Rule 26(a)(1)(A)(iii) computation that is actually a computation

[ ] Serve initial disclosures within 14 days after the Rule 26(f) conference. Fed. R. Civ. P. 26(a)(1)(C).
[ ] State each damages category separately and give a real number for every category you can compute today.
- Trap. "Plaintiff will disclose its damages after discovery" is not a computation. Under Fed. R. Civ. P. 37(c)(1) an undisclosed theory is excluded unless the failure was substantially justified or harmless, and courts have struck entire damages theories on the eve of trial.
[ ] For each category you cannot yet compute, identify the specific requests and interrogatory numbers you served to get it, and commit to a supplementation trigger — "within 30 days of a substantially complete production."
- Why. That converts your gap into the defendant's delay, which is exactly what a court weighs on the harmlessness question.
[ ] Attach or Bates-cite the documents supporting each computed figure: the test-purchase file, the remediation invoices, the agency media plan.
[ ] Calendar Rule 26(e) supplementation for the day after each major production lands, and actually supplement.
[ ] Defense counsel: serve your own computation on the fee claim, and calendar a motion to compel a proper plaintiff's computation within 60 days if theirs is a placeholder.
- Why. A granted motion to compel a damages computation is worth more at the fee stage than it costs, eighteen months later.

Cascade Wick disclosed disgorgement at "not less than $3,600,000" with the methodology stated, $186,400 in documented corrective advertising with the invoices Bates-cited, goodwill as not yet computable, and fees as a statutory item. No category was excluded at trial.

Phase 5 — Financial discovery: get the data, not the documents

[ ] Request the system export, not "documents sufficient to show sales," and name the systems: QuickBooks (.QBB/.QBW/.QBO), NetSuite, Xero, Sage, Shopify, WooCommerce, Amazon Seller Central, Faire, Walmart Marketplace.
[ ] Specify the fields. At minimum: order or invoice ID, order date, ship date, customer ID, ship-to state and postal code, sales channel, SKU/ASIN, product description, quantity, unit price, gross extended price, discounts and allowances, chargebacks, returns, freight billed, tax, and net collected — plus the data dictionary and chart of accounts.
- Authority. Fed. R. Civ. P. 34(b)(2)(E)(ii) requires production in the form ordinarily maintained or a reasonably usable form. Specify CSV or XLSX in the request; if you do not, you have invited the PDF dump.
[ ] Request the QuickBooks Audit Log or the equivalent system audit trail.
- Why. It shows edited and deleted transactions. It is the single most useful document in an obstruction case and almost nobody asks for it.
[ ] Request per-SKU cost data even though the deduction burden is the defendant's: standard cost build-ups, bills of material, supplier invoices, landed-cost calculations, inventory valuation reports, and any indirect-cost allocation methodology.
- Why. A defendant that first discloses its deduction case in an expert report is a defendant you want to impeach with its own contemporaneous ledger.
[ ] Serve the clearance-and-adoption request: all search reports, opinions of counsel, internal memoranda, and every document concerning the decision to continue after the demand letter.
- Authority. After Romag, this is the mental-state record that decides whether profits are awarded. Expect a privilege fight and an advice-of-counsel waiver question; see Running a Full Trademark Clearance Search.
[ ] Serve an interrogatory forcing quarterly unit and revenue figures by channel, and a second interrogatory requiring the defendant to identify every claimed deduction with the amount, the calculation method, the general-ledger account, and the supporting documents.
- Why. The deduction interrogatory is the most valuable single request in a disgorgement case. It forces the cost case into the open while there is time to test it.
- Trap. A Fed. R. Civ. P. 33(d) business-records answer is proper only if the burden of deriving the answer is substantially the same for you. Ninety thousand undifferentiated rows with no channel field is not a Rule 33(d) answer.
[ ] Serve third-party subpoenas early — marketplaces, payment processors (Stripe, Square, PayPal, Braintree), 3PL providers, contract manufacturers, top retail accounts, and the ad platforms. They take 30–90 days and they set the ceiling on everything else.
- Trap. Fed. R. Civ. P. 45(a)(4) requires notice to every party before a documents subpoena is served. Serving first and noticing later hands the defendant a clean win in front of the magistrate judge.
[ ] Ask every third party for a Fed. R. Evid. 902(11) certification with the production, and give the pretrial notice the rule requires.
- Why. It authenticates the records without a custodian at trial. It costs one sentence in the cover letter and saves a trial day.
[ ] Negotiate a two-tier protective order with an attorneys'-eyes-only tier for raw exports, an expert-disclosure notice provision, and a source-data clause permitting reformatting for Fed. R. Evid. 1006 summaries.
[ ] Answer proportionality objections structurally: § 1117(a) makes the defendant's sales the plaintiff's burden, so financial discovery is the claim; offer phased production; tie the date range to the § 1111 notice date plus a twelve-month pre-launch baseline; accept AEO designation for everything. The contrast with the Board's narrower regime is in Understanding TTAB Discovery and the Protective Order.

Cascade Wick: Amazon's ASIN-level report showed $2,684,000; Northbound's interrogatory answer said $2,410,000 for the same period. The $274,000 gap was netted returns — defensible on Amazon, never explained on the wholesale side, and worth more to the case than the dollars.

Phase 6 — Run the Rule 30(b)(6) financial deposition in the right order

[ ] Notice topics covering: each accounting and order-management system and who maintains it; unit sales and gross revenue by month, SKU, and channel; the completeness of the produced data; each claimed deduction and its ledger account; fixed costs and overhead allocation; any contention that sales are not attributable to the mark; advertising spend by channel; corporate structure and every transfer of funds, assets, inventory, or IP to any affiliate; and the clearance and post-demand-letter decisions.
- Why. The affiliate-transfer topic is the Dewberry topic. Ask it in every closely held case.
[ ] Confer in good faith about the topics as Fed. R. Civ. P. 30(b)(6) now requires — to get the right witness, not to soften the topics.
[ ] First, authenticate the data. Walk the export field by field; establish it is a business record kept in the ordinary course and that nothing responsive was omitted. Get "yes, that is every sale" before the witness has a reason to be careful.
[ ] Second, sum it. Hand the witness a one-page summary you prepared and ask whether the totals are right. A yes makes your gross number an admission and may make a revenue expert unnecessary.
[ ] Third, close the channels. Trade shows, liquidation and jobber sales, employee and friends-and-family sales, international sales, sales after the complaint. Every unclosed channel is a place the number can be revised.
[ ] Fourth, work the deductions one at a time, ending each with: would you have incurred this cost if you had never sold the accused line?
- Authority. A yes concedes the deduction. Maltina Corp. v. Cawy Bottling Co., 613 F.2d 582, 586 (5th Cir. 1980); Roulo v. Russ Berrie & Co., 886 F.2d 931, 941 (7th Cir. 1989).
[ ] Fifth, ask about apportionment last: any consumer research, A/B testing, conjoint study, or survey. Four noes is close to dispositive, because the burden is the infringer's.
- Authority. Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 206-07 (1942).
- Trap. Do not accept approximations. "Roughly two and a half million" is a hedge the defendant's expert will refine downward. Mark the document and ask whether it is accurate.

Cascade Wick: all channels closed, the overhead witness conceded rent and salaries would have been incurred anyway, and the company confirmed it had done no consumer research. Both the overhead deduction and the apportionment defense died in that room.

Phase 7 — Expert workup and the apportionment fight

[ ] Decide whether you need an affirmative expert at all. Retain to rebut; think hard before retaining to prove.
- Why. Section 1117(a) already gives the plaintiff a burden so light that an expert can only complicate it. Clean data plus a 30(b)(6) admission calls for a Fed. R. Evid. 1006 summary and a paralegal declaration, not a $60,000 report.
[ ] Retain a rebuttal expert immediately if the defendant offers a conjoint analysis or price-premium regression. That is not optional.
[ ] Scope the engagement letter in order: reconstruct gross revenue and reconcile variances; classify each claimed cost as variable and traceable, fixed and unaffected, or unallocable on this record; rebut the apportionment methodology; compute interest if instructed.
- Trap. Do not ask an accounting expert to opine on willfulness, consumer perception, or the "just sum." Those belong to the court, and the request is the first Rule 702 motion the defendant files.
[ ] Make every figure in the report traceable to a produced document or a stated assumption with an identified source.
- Authority. As amended 1 December 2023, Fed. R. Evid. 702 requires the proponent to show it is more likely than not that the opinion "reflects a reliable application of the principles and methods to the facts of the case." Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993).
- Trap. Extrapolation kills reports. If the expert projects nine unproduced months from six produced ones, state the method, test it against an independent data source, and show sensitivity.
[ ] Serve expert disclosures at least 90 days before trial, and rebuttal disclosures within 30 days after the other side's. Fed. R. Civ. P. 26(a)(2)(D).
[ ] Move in limine to preclude apportionment evidence the defendant never disclosed in interrogatory answers or 30(b)(6) testimony. Fed. R. Civ. P. 37(c)(1).
[ ] If apportionment was disclosed and rests on real consumer research, size the fight: rebut on methodology alone where the proposed reduction is under about 25% of the profit base; commission a competing study and move under Rule 702 where it is larger.
- Why. A credible 60% apportionment turns a $1.35M claim into $540,000 and changes the number at which the case should settle.
[ ] Attack a disclosed apportionment study on universe, attribute selection, price realism, and whether respondents saw the accused packaging or a sanitized version — the same craft as a confusion survey, worked through in Commissioning and Attacking a Trademark Survey, the Trademark Survey Design and Challenge Checklist, and the Evidence and Expert Witness Toolkit.
[ ] Check the arithmetic: an apportionment percentage applied to gross revenue rather than profit, or stacked on deductions that already capture the same effect, is double counting.
[ ] Where the defendant produced nothing, build the number from third parties and circumstantial evidence and move for a Rule 37(b)(2)(A)(i) order establishing the revenue facts.
- Authority. Louis Vuitton S.A. v. Spencer Handbags Corp., 765 F.2d 966, 972-73 (2d Cir. 1985); Klein-Becker USA, LLC v. Englert, 711 F.3d 1153, 1163 (10th Cir. 2013). Obstruction is not a defense; it is a methodology.

Cascade Wick: no affirmative expert, a Rule 1006 summary of the 90,000-row transaction file, and a rebuttal declaration. Northbound's asserted 40% apportionment — $1,696,000 — was excluded at the pretrial conference as undisclosed and unsupported.

Phase 8 — Build corrective advertising from invoices, not percentages

[ ] Tell the client, the week the demand letter goes out, to start remediating and keep every receipt.
- Why. Retrospective corrective advertising is ordinary out-of-pocket loss and among the easiest damages in trademark law to prove. Otis Clapp & Son, Inc. v. Filmore Vitamin Co., 754 F.2d 738, 745 (7th Cir. 1985). Prospective corrective advertising is a forecast, and courts police forecasts hard.
[ ] Categorize the spend so it maps to the confusion: channel notifications to trade accounts, defensive paid search on the client's own brand terms, trade-press advertising, and a customer-service script and email sequence for confused buyers.
[ ] Support the retrospective claim with a declaration from the marketing director tying each invoice to the infringement by date and channel.
[ ] Commission an independent agency media plan for the prospective claim, and instruct the expert in writing to design the minimum campaign needed to restore pre-infringement brand-term share of voice and unaided awareness, confined to the client's historical footprint.
- Why. That instruction anticipates the ceiling on its face. A corrective award may not exceed the value of the mark being corrected. Zazu Designs v. L'Oreal, S.A., 979 F.2d 499, 506 (7th Cir. 1992).
[ ] Run the Big O arithmetic as a check on your own number, not as the number: defendant's ad spend, times the share in markets where the client competes, times the FTC's 25% corrective benchmark.
- Authority. Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365, 1375-76 (10th Cir. 1977); West Des Moines State Bank v. Hawkeye Bancorporation, 722 F.2d 411, 413-14 (8th Cir. 1983); but see Adray v. Adry-Mart, Inc., 76 F.3d 984, 988-89 (9th Cir. 1995) (declining mechanical application).
- Trap. A number built top-down from 25% of the defendant's budget, with no media plan behind it, is the claim Zazu was written to defeat.
[ ] Strip out non-actionable harms. Folding the defendant's discounting into the corrective figure sinks the whole claim. Monahan Prods. LLC v. Sam's East, Inc., 463 F. Supp. 3d 128, 147 (D. Mass. 2020).
[ ] Confirm the parties actually compete and both are still in the market. Juicy Couture, Inc. v. L'Oreal USA, Inc., No. 04 Civ. 7203, 2006 WL 1359955, at *3 (S.D.N.Y. May 18, 2006); Callaway Golf Co. v. Slazenger, 384 F. Supp. 2d 735, 741 (D. Del. 2005).
[ ] Where a royalty is available, define the base exactly as the comparable license defines it, and state each adjustment for territory, exclusivity, term, field of use, and minimum guarantees separately so the court can accept some and reject others. The drafting that makes a license usable years later is in Drafting a Trademark License That Survives and the License Agreement Template.
- Trap. A license on "net wholesale invoice price" applied to a retail base overstates by 40–50%. And do not import the fifteen Georgia-Pacific factors wholesale from patent practice.

Cascade Wick: $186,400 in documented remediation, all awarded. Prospective claim of $340,000 from an agency plan, corroborated by the Big O check — $1,180,000 in Northbound spend, 71% in overlapping markets, 25% benchmark = $209,450 — offered as proof the plan was not inflated.

Phase 9 — Elect, in writing, before final judgment

[ ] Compute every live measure side by side on one page: disgorged profits; lost profits; corrective advertising; royalty; trebled profits or damages under § 1117(b) if counterfeiting is in the case; and § 1117(c) statutory damages counted as marks × types of goods.
[ ] Confirm whether the accused mark is a counterfeit within 15 U.S.C. § 1127 — spurious and identical to or substantially indistinguishable from the registered mark, on the goods for which it is registered. Ordinary confusing similarity is not counterfeiting.
[ ] If it is counterfeiting, run the election table.

| Situation | Elect | Why | |---|---|---| | Default, obstruction, offshore defendant, no books | § 1117(c) statutory damages | You cannot prove sales you cannot see; the court will not guess | | Records produced and trebled profits exceed the statutory count | § 1117(b) trebling | You also keep the mandatory fee award | | Records produced but the statutory count is higher | § 1117(c), after pricing the lost § 1117(b) fee | If the gap is smaller than your fee claim, the election is a net loss |

[ ] Count the statutory units properly: the ceiling is per counterfeit mark per type of goods or services, and courts have treated functionally distinct products as separate types. Coach, Inc. v. Horizon Trading USA Inc., 908 F. Supp. 2d 426, 437 (S.D.N.Y. 2012); Rolls-Royce PLC v. Rolls-Royce USA, Inc., 688 F. Supp. 2d 150, 159 (E.D.N.Y. 2010).
[ ] Brief the within-range factors: the defendant's profits and the plaintiff's losses so far as known, culpability, size of the operation, concealment, litigation conduct, and deterrence. Philip Morris USA, Inc. v. Jackson, 826 F. Supp. 2d 448, 453 (E.D.N.Y. 2011).
- Trap. Electing under § 1117(c) has been held to forfeit the mandatory § 1117(b) fee award, leaving only discretionary § 1117(a) fees. Louis Vuitton Malletier S.A. v. LY USA, Inc., 676 F.3d 83, 105-11 (2d Cir. 2012). Multiple defendants owe one statutory sum jointly, not one each. Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936, 947 (9th Cir. 2011). The full counterfeiting program sits in the Anticounterfeiting Program Checklist and the Anticounterfeiting and Border Enforcement Toolkit.
[ ] If the claim is dilution rather than infringement, confirm you can prove willful intent — Romag did not touch 15 U.S.C. § 1125(c)(5)(B). See the Trademark Dilution Claim Checklist.
[ ] Keep both computations alive through the pretrial order and make the election in the damages brief or proposed findings.

Phase 10 — Try the money and write the findings

[ ] Take a position on Fed. R. Civ. P. 42(b) bifurcation on purpose: resist it when your willfulness record is strong and your arithmetic is weak; accept or seek it when the arithmetic is airtight and the equities are ordinary.
[ ] Consider proposing a Fed. R. Civ. P. 53 special master for the accounting where the case is multi-channel and multi-entity. Section 1117(a) expressly lets the court "cause [profits and damages] to be assessed under its direction," and judges facing a three-day ledger trial are receptive.
[ ] Brief the governing circuit disgorgement test by name and apply it to facts. George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1540 (2d Cir. 1992); Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 175 (3d Cir. 2005); Synergistic Int'l, LLC v. Korman, 470 F.3d 162, 175 (4th Cir. 2006); Quick Techs., Inc. v. Sage Grp. PLC, 313 F.3d 338, 349 (5th Cir. 2002).
[ ] Serve proposed findings under Fed. R. Civ. P. 52(a)(1) in the order an appellate panel reads them: gross revenue with a record cite for each component; one numbered finding per claimed deduction, allowed or disallowed and why; whether the defendant carried any apportionment burden; the circuit factors applied to facts.
[ ] Ask for an express finding that the total is compensation and not a penalty, tracking 15 U.S.C. § 1117(a).
- Why. Enhancements untethered from compensation get vacated. Getty Petroleum Corp. v. Bartco Petroleum Corp., 858 F.2d 103, 113 (2d Cir. 1988); Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d 1105, 1115 (9th Cir. 2012); Kars 4 Kids Inc. v. America Can!, 8 F.4th 209, 223-24 (3d Cir. 2021); ALPO Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958, 970 (D.C. Cir. 1990).
[ ] Frame any "just sum" enhancement as compensation for measurement error the defendant caused — missing records, unreconciled variances — not as punishment. Sands, Taylor & Wood Co. v. Quaker Oats Co., 34 F.3d 1340, 1351-52 (7th Cir. 1994); Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1127 (5th Cir. 1991).
[ ] Ask for a percentage-of-sales award if the defendant claims it earned no profit. Otis Clapp, 754 F.2d at 744-45. If it proved no costs at all, ask for the entire gross. WMS Gaming Inc. v. WPC Prods. Ltd., 542 F.3d 601, 609 (7th Cir. 2008).
[ ] Brief prejudgment interest with a proposed rate and an attached computation.
- Authority. Mandatory-adjacent in counterfeiting under § 1117(b); otherwise a circuit split — Gorenstein Enters., Inc. v. Quality Care-USA, Inc., 874 F.2d 431, 436 (7th Cir. 1989) (near presumption in favor) versus Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247, 264 (2d Cir. 2014) (exceptional cases only). Propose the 26 U.S.C. § 6621 rate or the state statutory rate. Courts award what is easy to award.
[ ] Request affirmative relief in the proposed judgment: destruction under 15 U.S.C. § 1118, recall, corporate-name change, domain transfer. It converts a paper win into a market outcome.

Phase 11 — The fee petition and the bill of costs

[ ] Impose three billing rules at the opening memo: no block billing, task codes by claim and by phase, and contemporaneous entries only.
- Authority. N.Y. State Ass'n for Retarded Children, Inc. v. Carey, 711 F.2d 1136, 1147-48 (2d Cir. 1983). Reconstructed time is discounted everywhere and disallowed in some districts. Practice-management habits that make this painless are collected in The Solo and Small Firm IP Practice Toolkit.
[ ] Establish prevailing-party status on the face of the motion: a judgment, consent decree, or injunction — a judicially sanctioned material alteration of the legal relationship. Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Human Res., 532 U.S. 598, 604-05 (2001); CRST Van Expedited, Inc. v. EEOC, 578 U.S. 419, 431 (2016).
[ ] Argue "exceptional" on the Octane Fitness totality standard by preponderance, with the specific conduct: demands ignored, promises to stop broken, a clearance search deliberately skipped, an injunction violated, discovery orders defied. Octane Fitness, 572 U.S. at 554.
[ ] Build the lodestar with a declaration establishing market rates for the relevant community. Hensley v. Eckerhart, 461 U.S. 424, 433, 437 (1983); Blum v. Stenson, 465 U.S. 886, 895 n.11 (1984); Perdue v. Kenny A. ex rel. Winn, 559 U.S. 542, 552 (2010).
[ ] Volunteer reductions on the face of the motion — abandoned theories, travel at half rate, duplicative attendance.
- Why. It converts the court's posture from auditing to trusting, and a court is entitled to rough justice and an across-the-board cut. Fox v. Vice, 563 U.S. 826, 838 (2011).
[ ] Include non-taxable out-of-pocket expenses customarily billed to clients — research charges, expert fees, court reporter attendance, courier, travel — in the fee motion, not the bill of costs. Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 43 (1st Cir. 2006).
[ ] File the motion within 14 days of entry of judgment. Fed. R. Civ. P. 54(d)(2)(B)(i). Specify the judgment, the statute, and the amount or a fair estimate.
- Trap. This deadline has ended more fee claims than any substantive standard. Calendar it the day the case is submitted, not the day judgment enters.
[ ] Ask the court to order under Fed. R. Civ. P. 58(e) that the fee motion have the effect of a Rule 59 motion under Fed. R. App. P. 4(a)(4)(A) if you want the appeal clock to wait for the fee ruling. Absent that order, it does not.
[ ] File the bill of costs separately on Form AO 133 within the local-rule window (commonly 14–30 days), itemized to 28 U.S.C. § 1920 categories only.
- Authority. Section 1920 is construed narrowly, Taniguchi v. Kan Pac. Saipan, Ltd., 566 U.S. 560, 573 (2012), and expert fees are not taxable beyond the $40 daily attendance fee in 28 U.S.C. § 1821 absent explicit authorization, Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437, 445 (1987).
[ ] Check your circuit before serving or accepting a Fed. R. Civ. P. 68 offer, which must be made at least 14 days before trial. Whether Lanham Act fees ride along as Rule 68 "costs" turns on the statute's structure. Marek v. Chesny, 473 U.S. 1, 9 (1985).

Cascade Wick: $486,000 awarded on a lodestar with $18,730 in voluntary reductions disclosed up front, including all 34.2 hours on the abandoned royalty theory. Taxed costs came to $11,400, with the expert spend moved into the fee motion.

Phase 12 — Collect

[ ] Use the automatic 30-day stay under Fed. R. Civ. P. 62(a) rather than waiting it out: confirm entry under Rule 58, get costs taxed, and start asset discovery, which is not stayed.
[ ] Oppose any request to reduce or waive a Fed. R. Civ. P. 62(b) supersedeas bond, and if the court allows alternative security insist on a letter of credit or escrowed cash — something you can execute against.
[ ] Serve the Rule 69(a)(2) package: judgment-debtor interrogatories or an information subpoena, a bank subpoena for 24 months of statements, subpoenas to every payment processor you already identified in Phase 5, a subpoena to the accountant who prepared the returns, and a debtor's-principal deposition with document demands attached.
- Authority. Fed. R. Civ. P. 69(a)(2) reaches any person including the debtor, without a separate proceeding, and the inquiry is broad. Credit Lyonnais, S.A. v. SGC Int'l, Inc., 160 F.3d 428, 430-31 (8th Cir. 1998).
[ ] Hunt specifically for transfers made between the demand-letter date and judgment. That is the fraudulent-transfer case under the Uniform Voidable Transactions Act as adopted in the debtor's state, commonly with a four-year look-back.
[ ] Read the state execution statute before filing anything — Fed. R. Civ. P. 69(a)(1) borrows the practice of the state where the court sits, so exemptions, lien docketing, charging orders against LLC interests, and garnishment reach are all state-law questions.
[ ] Register the judgment in any district holding assets, using Form AO 451, under 28 U.S.C. § 1963.
[ ] Compute post-judgment interest under 28 U.S.C. § 1961 — the weekly average one-year constant maturity Treasury yield for the week preceding entry, compounded annually — and add it to every demand.
[ ] Enforce the injunction by contempt, not by writ. In many cases the contempt exposure is what finally moves the money.
[ ] If the debtor files, calendar the § 523(a)(6) nondischargeability complaint the day the § 341 notice arrives: 60 days after the first date set for the meeting of creditors. Fed. R. Bankr. P. 4007(c).
- Why. Willfulness findings from Phase 10 can carry the adversary proceeding on collateral estoppel, though Kawaauhau v. Geiger, 523 U.S. 57, 61 (1998), requires a deliberate or intentional injury, not merely a deliberate act. The 11 U.S.C. § 362 stay halts collection but generally not enforcement of a non-monetary injunction.
- Trap. Only individuals receive a Chapter 7 discharge. Against a corporate debtor the real question is whether you have an alter-ego or fraudulent-transfer claim against a solvent affiliate — which returns you to the Phase 2 entity map.
[ ] If the defendant is judgment-proof, close the loop programmatically: catch the next one earlier through the Brand Enforcement Toolkit and the Online Brand Protection Toolkit.

Cascade Wick: judgment of $2,874,400 entered. No supersedeas bond posted. Rule 69(a)(2) discovery located the marketplace disbursement account and a $310,000 transfer to the principal's spouse in June 2025 — the transfer that made the case settle for cash.

Common Mistakes

Dating the recoverable period from the complaint. It runs from the earlier of compliant ® usage or actual notice. 15 U.S.C. § 1111.
Suing the entity with the name instead of the entity with the books. Dewberry made the caption a damages decision, and Peacock means you cannot fix it later.
A placeholder Rule 26(a)(1)(A)(iii) computation. It is the cheapest stage in the case with the largest downside.
Requesting "documents sufficient to show sales." You will get PDFs. Ask for the system export, name the fields, and specify the format under Rule 34(b)(2)(E)(ii).
Letting the 30(b)(6) witness testify in approximations. An unsummed export is not an admission.
Assuming apportionment is your problem. It is the infringer's. Mishawaka, 316 U.S. at 206-07. Say so and make them prove it.
Building corrective advertising from 25% of the defendant's ad spend. Build it from a media plan and use the benchmark as corroboration, or lose the whole claim under Zazu.
Pleading a reasonable royalty with no anchor. Three noes at the Phase 1 gate means no royalty case, and the abandoned theory shows up in the defendant's fee motion.
Electing § 1117(c) statutory damages without pricing the forfeited § 1117(b) mandatory fee.
Asking for an enhancement as punishment. Frame it as compensation for measurement error the defendant caused, or it gets vacated.
Missing the 14-day Rule 54(d)(2) fee deadline, or putting expert fees on the AO 133 bill of costs where they are not taxable.
Treating collection as an afterthought. A $1.75 million judgment against an LLC with $60,000 in the bank is worth $60,000.

Deadlines at a Glance

| Event | Deadline | Authority | |---|---|---| | Initial disclosures, including the damages computation | 14 days after the Rule 26(f) conference | Fed. R. Civ. P. 26(a)(1)(C) | | Notice to parties before serving a documents subpoena | Before service | Fed. R. Civ. P. 45(a)(4) | | Affirmative expert disclosures | 90 days before trial, absent a scheduling order | Fed. R. Civ. P. 26(a)(2)(D)(i) | | Rebuttal expert disclosures | 30 days after the other party's disclosure | Fed. R. Civ. P. 26(a)(2)(D)(ii) | | Rule 68 offer of judgment | At least 14 days before trial; 14 days to accept | Fed. R. Civ. P. 68(a)–(b) | | Election of § 1117(c) statutory damages | Any time before final judgment | 15 U.S.C. § 1117(c) | | Motion to alter or amend the judgment; to amend findings | 28 days after entry | Fed. R. Civ. P. 59(e); 52(b) | | Attorney's fee motion | 14 days after entry of judgment | Fed. R. Civ. P. 54(d)(2)(B)(i) | | Bill of costs (Form AO 133) | Per local rule, commonly 14–30 days | Fed. R. Civ. P. 54(d)(1) | | Automatic stay of execution | 30 days after entry | Fed. R. Civ. P. 62(a) | | Notice of appeal | 30 days after entry (60 if the United States is a party) | Fed. R. App. P. 4(a)(1) | | § 523(a)(6) nondischargeability complaint | 60 days after the first date set for the § 341 meeting | Fed. R. Bankr. P. 4007(c) | | Laches / borrowed limitations period | Varies by state; no federal Lanham Act limitations period | State analogue |