Proving Trademark Damages and Disgorging Profits: A Practitioner's Guide After Romag
By Casey Scott McKay ·
This guide is the execution manual for the money side of a federal trademark case, built as fifteen numbered stages from the pre-suit financial audit to the writ of execution. It shows how to preserve the Section 1111 notice record and map the defendant's corporate structure before filing, how to draft a Rule 26(a)(1)(A)(iii) damages computation that survives a Rule 37(c)(1) motion, how to write document requests and Rule 45 subpoenas that actually produce transaction-level revenue data, how to run the Rule 30(b)(6) financial deposition so the gross-sales number and the deduction case are both locked, and when an accounting expert earns her fee versus when a Rule 1006 summary will do. It works the apportionment and causal-nexus fight from both sides, builds a corrective advertising claim from agency media plans rather than from the Big O percentage, explains when a reasonable royalty is real and when it is malpractice to plead, and gives a decision tree for the counterfeiting election between Section 1117(c) statutory damages and trebled profits under Section 1117(b). It closes with the lodestar fee petition, the fourteen-day Rule 54(d)(2) deadline, the bill of costs, and the collection sequence — Rule 62 stays, Rule 69 execution, Rule 69(a)(2) asset discovery, Section 1963 registration, and the bankruptcy discharge fight under Section 523(a)(6). Model language, a cost-and-timeline table, and a worked example carried from first invoice to final collection run throughout. The doctrine behind all of it lives in the companion article; this document assumes it.
IP and Technology > Trademarks | Guide | Published 30 June 2025 - Updated 11 June 2026 | Casey Scott McKay - marksy.us
Summary. This is the execution manual for the money side of a federal trademark case, organized as fifteen numbered stages from the pre-suit financial audit to the writ of execution. It covers preserving the § 1111 notice record and mapping the defendant's entities before filing; drafting a Rule 26(a)(1)(A)(iii) damages computation that survives Rule 37(c)(1); writing document requests and Rule 45 subpoenas that produce transaction-level revenue rather than PDFs; running the Rule 30(b)(6) financial deposition so both the gross number and the deduction case are locked; when an accounting expert earns her fee and when a Rule 1006 summary will do; the apportionment and causal-nexus fight from both sides; building corrective advertising from agency media plans instead of a percentage; when a reasonable royalty is real; the counterfeiting election between § 1117(c) statutory damages and trebled profits; the lodestar fee petition and its fourteen-day deadline; and collection through Rule 69, § 1963 registration, and the § 523(a)(6) discharge fight. Model language, a cost-and-timeline table, and one worked example run from first invoice to final payment.
Keywords: disgorgement discovery · defendant's profits calculation · rule 30(b)(6) financial deposition · damages expert report · apportionment burden · causal nexus · corrective advertising damages · big o tire formula · reasonable royalty trademark · comparable licenses · statutory damages election · 15 u.s.c. 1117(c) · lodestar fee petition · contemporaneous time records · rule 54(d)(2) · bill of costs · rule 69 writ of execution · post-judgment interest · romag fasteners · rule 26 damages computation
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