Trademark Remedies Toolkit: Injunctions, Profits, Damages, and Attorney's Fees

By Casey Scott McKay · 2024-12-23

This toolkit is a guided tour of everything Marksy publishes on what a trademark owner can actually get out of a court, organized around Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1116 and 1117. It maps the remedy system in one piece — the injunction that most plaintiffs really win, the Trademark Modernization Act's rebuttable presumption of irreparable harm, the disgorgement engine that survived Romag and was narrowed by Dewberry, the apportionment fight that decides most profits trials, corrective advertising under the Big O formula, the counterfeiting overlay of ex parte seizures and statutory damages up to $2,000,000 per mark per type of goods, exceptional-case fee shifting after Octane Fitness, and the contempt machinery that turns an order into a change in the market. Each section introduces the doctrine in plain terms and then points to the Marksy article, guide, checklist, or form that carries the detail, with a note on when in the case you should reach for it. A branching reading path tells a first-year associate, an in-house counsel pricing a dispute, and a defendant on the receiving end of a TRO application where to start. A consolidated authorities table collects the controlling statutes, rules, and cases with one-line holdings, and the closing sections cover the settlement forms and the neighboring toolkits — counterfeiting, litigation, defenses, evidence, and online enforcement — that pick up where this one stops.

IP and Technology > Trademarks | Toolkit | Published 23 December 2024 - Updated 12 July 2026 | Casey Scott McKay - marksy.us

Summary. This toolkit is a guided tour of everything Marksy publishes on what a trademark owner can actually get out of a court, built around Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1116 and 1117. It maps the remedy system in one piece — the injunction that most plaintiffs really win, the Trademark Modernization Act's rebuttable presumption of irreparable harm, the disgorgement engine that survived Romag and was narrowed by Dewberry, the apportionment fight that decides most profits trials, corrective advertising under the Big O formula, the counterfeiting overlay of ex parte seizures and statutory damages, exceptional-case fee shifting after Octane Fitness, and the contempt machinery that turns an order into a change in the market. Each section explains the doctrine in plain terms and then points you to the Marksy document that carries the detail, with a note on when in the case to reach for it. A branching reading path, a consolidated authorities table, the settlement forms, and the neighboring toolkits round it out.

Keywords: lanham act section 34 · lanham act section 35 · 15 u.s.c. 1116 · 15 u.s.c. 1117 · preliminary injunction · trademark modernization act · rebuttable presumption of irreparable harm · disgorgement of profits · romag fasteners · apportionment of profits · corrective advertising · big o tire · reasonable royalty · counterfeiting statutory damages · ex parte seizure · exceptional case attorney fees · octane fitness · civil contempt · rule 65 · dewberry group

Start Here

Remedies are the part of a trademark case clients ask about first and lawyers plan for last. The complaint gets drafted, the confusion factors get briefed, and then — somewhere around the expert deadline — somebody realizes nobody ever decided which of the five monetary theories this case was going to carry, or whether the client's own advertising ever bore an ®.

This toolkit collects everything Marksy publishes on the subject, in the order a case actually runs, and answers three questions.

Can I make it stop, how fast, and what does trying cost? Section 34 of the Lanham Act, 15 U.S.C. § 1116, plus Fed. R. Civ. P. 65 — the TRO, the preliminary injunction, the bond, and an order specific enough to enforce.

Is there money here, and which theory carries it? Section 35, 15 U.S.C. § 1117 — disgorgement of the infringer's profits, the plaintiff's own damages, corrective advertising, a reasonable royalty, and the counterfeiting statutory-damages election.

Who pays the lawyers? The "exceptional case" clause of § 1117(a), which since 2014 has run in both directions.

If you read only one thing, read What a Trademark Win Is Worth: Injunctions, Profits, Damages, and Fees Under Section 35. It is the anchor for this toolkit — the statutory architecture, the burden-shifting rule that makes disgorgement work, the circuit factor tests side by side, and an honest account of what remains unsettled after Romag and Dewberry. Everything else here feeds it or executes it.

Who this is for: litigators building or defending a remedies case; in-house counsel pricing a dispute before authorizing a complaint; solo and small-firm practitioners who need the whole picture in one sitting; and brand owners who want to know, before spending anything, whether the realistic outcome is an order, a check, or both.

The Remedy Map

Trademark remedies live in a short run of statutory sections, and the sequence matters more than most practitioners realize.

Section 34 — 15 U.S.C. § 1116 — the injunction power. Subsection (a) lets district courts grant injunctions "according to the principles of equity," and since the Trademark Modernization Act of 2020 supplies a rebuttable presumption of irreparable harm on a finding of likely success (preliminary) or of violation (permanent). Three underused pieces sit in the same subsection: an injunction entered after notice and hearing may be served and enforced anywhere in the United States; the court may direct the defendant to file a sworn compliance report within thirty days of service; and violations are punishable by contempt in the issuing court or wherever the defendant is found. Subsection (c) requires the clerk to notify the USPTO Director within one month of filing; subsection (d) is the counterfeiting seizure regime.

Section 35 — 15 U.S.C. § 1117 — the money. Subsection (a) is the general provision: the defendant's profits, any damages sustained, and costs, "subject to the principles of equity," with treble damages available, an unbounded "just sum" adjustment for profits in either direction, fees in exceptional cases, and the hard limit that any recovery "shall constitute compensation and not a penalty." Subsection (b) makes trebling and a fee award effectively mandatory in intentional counterfeiting cases. Subsections (c) and (d) are the statutory-damages elections for counterfeiting and cybersquatting; (e) presumes willfulness where a domain registrant lied to the registrar.

The supporting cast. Section 36, § 1118, orders destruction of infringing labels, packaging, and advertising. Section 37, § 1119, lets the court cancel or rectify a registration — a remedy the TTAB can also give, but only a district court can pair with an injunction. Section 38, § 1120, creates a damages action against anyone who procures a registration by false declaration. Section 29, § 1111, is the gate almost nobody audits: a registrant who did not display the ® symbol recovers no profits and no damages for the period before the defendant had actual notice. And § 1114(2) limits printers, publishers, and domain registrars to injunctive relief in defined circumstances, which is why the fulfillment house and the ad network are rarely worth suing for money.

Three structural facts organize everything below.

First, the injunction is the remedy. In ordinary infringement the Supreme Court has said an injunction may "satisfy the equities of the case" all by itself. Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 131 (1947). Most reported trademark wins are exactly that: an order, a sell-off period, and no money.

Second, everything monetary runs through equity. Section 1117(a) makes profits and damages "subject to the principles of equity," which means a plaintiff can win liability outright and recover nothing. Delay, absence of competition, no proven diversion, and the plaintiff's own conduct are all reasons courts give.

Third, fee exposure is symmetric. Since Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), adopted for Lanham Act fees in every regional circuit, an overreaching plaintiff is as exposed as a stubborn defendant. Price a marginal claim accordingly, before filing.

The whole system in one table:

| Remedy | Authority | Who decides | What you must show | Where to read it in Marksy | |---|---|---|---|---| | TRO / preliminary injunction | § 1116(a); Fed. R. Civ. P. 65 | Judge | Winter four factors; TMA presumption on a merits finding | Preliminary Injunctions in Trademark Cases | | Permanent injunction | § 1116(a); eBay | Judge | Same four factors, proved rather than likely | Same | | Ex parte seizure | § 1116(d) | Judge | Seven statutory findings, including likely destruction of evidence | Trademark Counterfeiting | | Defendant's profits | § 1117(a) | Judge (usually) | Plaintiff proves sales; defendant proves deductions | What a Trademark Win Is Worth | | Actual damages | § 1117(a) | Jury if legal | Harm, causation, amount, equity — all on the plaintiff | Same | | Corrective advertising | § 1117(a) | Jury or judge | Economic rationale; Big O / Zazu ceiling | Proving Trademark Damages and Disgorging Profits | | Reasonable royalty | § 1117(a) | Jury or judge | A pricing anchor — prior license, program, or rejected offer | Same | | Treble + mandatory fees | § 1117(b) | Judge | Intentional use of a counterfeit mark | Trademark Counterfeiting | | Statutory damages (counterfeiting) | § 1117(c) | Judge or jury | Election before final judgment; per mark, per type of goods | Same | | Statutory damages (cybersquatting) | § 1117(d) | Judge or jury | Election; $1,000–$100,000 per domain | Cybersquatting and the ACPA | | Destruction; cancellation | §§ 1118, 1119 | Judge | Infringing goods and advertising in the defendant's hands; a ground to rectify the register | Federal Court vs. TTAB | | Attorney's fees | § 1117(a) | Judge | "Exceptional" under Octane Fitness; Rule 54(d)(2) in 14 days | Trademark Monetary Recovery Checklist | | Civil contempt | § 1116(a); inherent power | Judge | Valid order, notice, violation — clear and convincing | Moving for a TRO or Preliminary Injunction |

A pattern runs down that table: the further you go, the more the remedy depends on records that had to exist before the case started — ® usage, clearance opinions, license terms, marketing invoices, registration coverage. That is why a remedies toolkit has to reach into prosecution and portfolio documents, and why the sections below do.

Section 34: Getting the Order

The preliminary injunction usually is the case. Once a defendant is enjoined from using a name it has printed on packaging, bought search ads against, and told 200 retailers about, the remaining litigation is about price, not principle.

The doctrine was in flux for fifteen years. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), and Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008), dismantled the assumption that likely confusion equals irreparable harm; the Ninth Circuit's Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239 (9th Cir. 2013), was the sharpest break. Section 226 of the Trademark Modernization Act wrote a rebuttable presumption back into § 1116(a) in December 2020. What resulted is neither the old regime nor the eBay interregnum: a real procedural advantage, triggered only by a merits finding, shifting the burden of production and not persuasion under Fed. R. Evid. 301, and evaporating the moment a competent defendant puts in contrary evidence. Nichino America, Inc. v. Valent U.S.A., LLC, 44 F.4th 180 (3d Cir. 2022), is the framework opinion.

Preliminary Injunctions in Trademark Cases: The Four-Factor Test After eBay and the Trademark Modernization Act is the doctrinal treatment: how the presumption was lost and restored, the five recurring rebuttal arguments, why delay defeats more motions than the merits do, and the circuit-by-circuit sliding-scale variations. Read it when deciding whether to move at all, and again before writing the irreparable-harm section — which it tells you to write as though the presumption did not exist.

Moving for a TRO or Preliminary Injunction in a Trademark Case: A Practitioner's Guide is the execution manual for the same motion, in thirteen stages from a 48-hour triage to post-order contempt: the declaration package that survives the "platitudes" objection, expedited discovery under Fed. R. Civ. P. 26(d)(1), bond negotiation, and the proposed order you should be drafting on day four. Reach for it the morning the client calls, in parallel with the doctrine piece rather than after it.

Preliminary Injunction Motion Checklist for Trademark Cases: Declarations, Bond, and Notice reduces that workflow to eleven tickable phases plus a deadlines table — the Rule 65(b)(2) fourteen-day TRO clock, the 10-to-15-day § 1116(d)(10)(A) seizure hearing window, the thirty-day § 1116(a) compliance report. Use it as the file's cover sheet, and hand the last phase, "if you are opposing the motion," to whoever is defending.

The trap that costs the most. A registered, incontestable word mark compresses into a two-page validity declaration. Unregistered product-design trade dress does not: secondary meaning and non-functionality are expert showings that take months. Filing an emergency motion on unregistered trade dress is the single most common self-inflicted wound in this practice. The scope of the problem is set out in Trade Dress and the Functionality Doctrine, and the fix — building the record before you need it — is in Protecting Trade Dress.

Making the Order Stick: Rule 65(d), Compliance, and Contempt

The most consequential document in an injunction proceeding is the proposed order, and it is the one lawyers spend the least time on. Fed. R. Civ. P. 65(d)(1) requires the order to state its reasons, state its terms specifically, and describe the restrained acts in reasonable detail without incorporating other documents. "The specificity provisions of Rule 65(d) are no mere technical requirements." Schmidt v. Lessard, 414 U.S. 473, 476 (1974) (per curiam). An order reading "Defendant shall cease infringing Plaintiff's marks" is worth nothing in a contempt proceeding.

Contempt is where drafting quality converts into leverage. The movant must show by clear and convincing evidence that a valid order existed, that the contemnor knew of it, and that it was violated; good faith is no defense, McComb v. Jacksonville Paper Co., 336 U.S. 187, 191 (1949), but there is no contempt where a "fair ground of doubt" exists about whether the order reached the conduct, Taggart v. Lorenzen, 587 U.S. 554, 561-62 (2019). Those two rules explain the whole drafting exercise: specificity eliminates doubt. Civil sanctions must coerce compliance or compensate the complainant, United States v. United Mine Workers, 330 U.S. 258, 303-04 (1947); the civil/criminal line is drawn in International Union, UMWA v. Bagwell, 512 U.S. 821 (1994).

Rule 65(d)(2) decides reach. The order binds parties, their officers and agents, and non-parties "in active concert or participation" — but only on actual notice, and it does not sweep in strangers who merely compete. Regal Knitwear Co. v. NLRB, 324 U.S. 9, 13-14 (1945). Serving the co-packer, the registrar, the distributors, and each marketplace is not housekeeping; it is what makes the order operate.

Stages 11 and 13 of Moving for a TRO or Preliminary Injunction contain a paragraph-by-paragraph model order — enjoined marks, goods, channels, geography, sell-off, third-party notice, domains, affirmative acts, compliance report, bond, duration — and the five post-order dates that decide whether an order is obeyed. Read them before the hearing, not after. For the monitoring that produces contempt evidence, the Brand Enforcement Toolkit: Watching, Warning, and Escalating covers the watch-and-capture routine, and Trademark Watch Services: What to Monitor explains what a commercial watch does and does not catch.

Section 35(a): The Profits Engine

Most trademark plaintiffs who recover money recover the defendant's profits, and the reason is procedural. Section 1117(a) says the plaintiff "shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed." That codifies Hamilton-Brown Shoe Co. v. Wolf Brothers & Co., 240 U.S. 251 (1916), and Mishawaka Rubber & Woolen Manufacturing Co. v. S.S. Kresge Co., 316 U.S. 203, 206-07 (1942), which put the windfall from uncertainty on the wrongdoer rather than the mark owner. Prove gross revenue on the accused line and stop; the defendant now owns the arithmetic.

Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020), removed willfulness as a categorical precondition under § 1125(a) while calling mental state "a highly important consideration." 590 U.S. at 219 — a gate converted into a factor, and in most district courts still the dominant one. Note the asymmetry: dilution money under §§ 1117(a) and 1125(c)(5)(B) still requires willful intent, so a dilution plaintiff who cannot prove intent gets an injunction and nothing else.

Dewberry Group, Inc. v. Dewberry Engineers Inc., 604 U.S. 321 (2025), then vacated a roughly $43 million award because "defendant's profits" means the named defendant's profits, not an affiliate's. That is a caption lesson: sue the entity whose books hold the money, plead alter ego with facts, and take corporate-structure discovery early.

Apportionment decides most profits trials, and the burden is the infringer's. A defendant that merely asserts 40% of demand came from its own house brand loses the argument entirely; a defendant that proves it with a survey or conjoint study can cut an award by most of its value.

Proving Trademark Damages and Disgorging Profits: A Practitioner's Guide After Romag is the deepest document in this cluster: fifteen stages from a four-hour pre-suit financial audit to a writ of execution, including the Rule 26(a)(1)(A)(iii) computation most plaintiffs botch, requests that produce transaction-level revenue instead of PDFs, the Rule 30(b)(6) financial deposition run in the right order, and a decision tree for how hard to fight apportionment. Open it the week you draft the complaint; keep it open through the fee petition.

Trademark Monetary Recovery Checklist: Proof of Profits, Damages, Corrective Advertising, and Fees is that sequence as twelve tickable phases, from the § 1111 notice audit through collection, with a deadlines table and a common-mistakes list worth reading on its own. Use it to run the matter and to brief the client on what the money case will demand of them.

Consumer Surveys in Trademark Cases: What Eveready and Squirt Actually Measure matters here for a reason people miss: the survey technology that proves confusion is what proves — or defeats — apportionment. Read it before scoping an expert budget on either side of a profits case. Commissioning and Attacking a Trademark Survey is the execution counterpart on universe definition, controls, and Fed. R. Evid. 702 practice; reach for it when the apportionment defense will be real, with the Trademark Survey Design and Challenge Checklist for the mechanics.

Because Dewberry made corporate structure a damages issue, two transactional documents now belong in a litigator's reading. Trademarks in the Deal explains how brand-holding structures get built — which is what you are reverse-engineering when you decide whom to name. The Trademark Due Diligence Checklist is the fastest way to map an opponent's entities and recorded interests before you file.

The Damages the Plaintiff Has to Prove

Everything other than disgorgement puts the whole burden back on the plaintiff, and it shows in the win rates.

Actual damages require harm, causation, amount, and equity, proved with reasonable certainty. Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1404-07 (9th Cir. 1993). Lost-profits claims fail most often on causation, because the plaintiff cannot show the defendant's customers would have bought from it.

Corrective advertising is the most interesting theory in the field: money for the cure rather than the disease. Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977), is universally cited and widely misremembered. It is not a rule that a plaintiff gets 25% of the infringer's ad spend; it holds that a prospective award needs an economic rationale, and the Tenth Circuit borrowed the FTC's 25% benchmark, scaled to the plaintiff's fourteen-state footprint, to discipline a jury number that had none. The ceiling comes from Zazu Designs v. L'Oreal, S.A., 979 F.2d 499, 506 (7th Cir. 1992): the award may not exceed the value of the mark it corrects. Retrospective corrective advertising — money the client actually spent — is ordinary out-of-pocket damage and far easier to win, which is the best argument for spending it early.

A reasonable royalty is the fallback patent lawyers assume and trademark lawyers rarely get. Courts refuse to impose a license the plaintiff would never have granted. A&H Sportswear Co. v. Victoria's Secret Stores, Inc., 166 F.3d 197, 208 (3d Cir. 1999). It works where a pricing anchor exists — a holdover licensee or franchisee, an established licensing program, or a rejected offer — and essentially nowhere else.

That makes license drafting a damages exercise. Drafting a Trademark License That Survives covers the termination and post-termination provisions that make a holdover royalty close to unlosable, plus the quality-control obligations that later supply the most durable irreparable-harm theory there is. Read it before signing a license, and again the day a licensee holds over. The Trademark License Quality Control Checklist documents the inspections that turn "loss of control" from an adjective into evidence — and keeps the mark alive against the attack described in Naked Licensing.

Where the infringement lives in paid search rather than on packaging, the damages theory changes shape: click-level data, not shelf space. Running a Keyword and Paid-Search Trademark Program sets out platform complaint routes cheaper than any of this, and Buying a Competitor's Name explains why the liability case has gotten harder — a remedies fact before it is a merits fact.

Counterfeiting: The Parallel Remedy Universe

Counterfeiting is the one corner of trademark law where the ordinary rules invert. A plaintiff can seize inventory before the defendant knows a case exists, elect statutory damages of $1,000 to $200,000 per counterfeit mark per type of goods — $2,000,000 for willful counterfeiting — collect trebled profits and a mandatory fee award under § 1117(b), and hand the file to a United States Attorney under 18 U.S.C. § 2320.

Two cautions. The definitions are narrower than clients assume: a "counterfeit mark" under § 1116(d)(1)(B) must be identical to or substantially indistinguishable from a mark registered on the Principal Register for those goods, which excludes many obvious knockoffs. And the seizure statute is used less than its prominence suggests — most plaintiffs proceed by ex parte TRO under Rule 65(b) to avoid the § 1116(d) bond framework, mandatory law-enforcement service, seven-day clock, and wrongful-seizure counterclaim under § 1116(d)(11). The prejudgment asset freeze, which is what actually recovers money here, rests on an equitable-accounting predicate that Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308 (1999), makes fragile if the plaintiff always meant to elect statutory damages instead.

Trademark Counterfeiting: Civil Seizures, Statutory Damages, and Criminal Exposure is the doctrinal center: the two definitions and the gap between them, the seven § 1116(d)(4)(B) findings and the one that fails, the freeze problem after Gucci America, Inc. v. Weixing Li, 768 F.3d 122 (2d Cir. 2014), the arithmetic of "type of goods," contributory liability after Tiffany (NJ) Inc. v. eBay Inc., and the judicial pushback against Schedule A practice. Read it before electing anything.

Stopping Counterfeits at the Border: A Practitioner's Guide to CBP Recordation, Seizures, and Enforcement Programs is the operational alternative to litigation: IPRR recordation under 19 C.F.R. Part 133, the Product Identification Training Guide a port officer can use in ninety seconds, the detention clocks, the Lever rule, and Section 337 exclusion orders at the ITC. Reach for it when the defendants are offshore and a judgment would be uncollectible anyway.

Anticounterfeiting Program Checklist: Recordation, Marketplace Takedowns, and Seizure Response is the ten-phase program version, beginning with the registration gaps that quietly disable later remedies and ending with a criminal referral a prosecutor will pick up. Give it to a brand-protection manager; it converts episodic panic into a budget line.

The Anticounterfeiting and Border Enforcement Toolkit collects the whole cluster if counterfeiting rather than remedies is your entry point.

Fees, Costs, and Interest

For four decades "exceptional" under § 1117(a) meant something close to bad faith, and fee awards were rare. Octane Fitness replaced that with a totality test — a case that "stands out from others with respect to the substantive strength of a party's litigating position . . . or the unreasonable manner in which the case was litigated," 572 U.S. at 554, on a preponderance standard — and every regional circuit has adopted it for the Lanham Act.

What earns a plaintiff fees is a defendant who was told and kept going: demands ignored, promises broken, clearance deliberately skipped, an injunction violated. What earns a defendant fees is a plaintiff who overreached on ownership, on similarity, or in discovery. Two mechanics decide more fee claims than any standard: the Fed. R. Civ. P. 54(d)(2)(B)(i) fourteen-day deadline, and contemporaneous time records that were either kept or were not. Costs are separate, presumptive under Rule 54(d)(1), and confined to the 28 U.S.C. § 1920 categories — which is why a case turning on a $180,000 survey expert can produce a $9,000 cost award. Prejudgment interest is express in counterfeiting cases under § 1117(b) and a circuit-by-circuit question everywhere else; post-judgment interest under 28 U.S.C. § 1961 is automatic and frequently forgotten.

The fee section of What a Trademark Win Is Worth carries the full circuit adoption table, and Stage 12 of Proving Trademark Damages and Disgorging Profits covers lodestar mechanics and the eighteen months of billing hygiene that precede a fourteen-day filing window.

Two pre-suit documents are also fee documents. The Pre-Litigation Enforcement Checklist captures the party identification, dates, registration numbers, and evidence a court later reads as diligence — the same file that shows the defendant was on notice. Sending an Effective Cease-and-Desist Letter is where the notice date gets fixed in writing: a dated, specific, non-abusive demand is a fee-shifting asset, while an overreaching one is exhibit A in the other side's motion. On the receiving end, Responding to a Cease-and-Desist Letter covers the reply that preserves a defendant's own fee claim instead of manufacturing willfulness.

Practice tip. On the defense side, a documented clearance opinion is now among the most valuable exhibits in the case, because Romag left mental state at the center of the profits analysis and Octane Fitness left it at the center of fees. The opinion described in Running a Full Trademark Clearance Search costs a fraction of one deposition. Trademark Clearance Searching: What a Knockout Search Can and Cannot Tell You is the short version for a client who thinks a free database search is the same thing.

Remedies Against the Registration, and the Forum Question

A district court can do what no other tribunal can: enjoin conduct and fix the register in one judgment. Under 15 U.S.C. § 1119 it may cancel or restore a registration or otherwise rectify the register in any action involving a registered mark; under § 1120 a party injured by a registration procured through a false declaration has a damages action — narrow, rarely won, occasionally decisive as a counterclaim. The Board can do neither. The TTAB determines the right to register and nothing else; it cannot enjoin anyone, award a dollar, or shift fees. TBMP § 102.01. That single fact drives the forum decision.

Federal Court vs. TTAB: Where to Bring Your Dispute is the short orientation on that choice — registration versus use and damages — and belongs at the front of any enforcement analysis. Pair it with TTAB Proceedings: Opposition vs. Cancellation when the target is an application rather than market conduct, and the TTAB Practice Toolkit if the Board turns out to be the right venue.

Where the registration itself is the weapon, the analysis inverts. Fraud on the Trademark Office: What In re Bose Actually Requires explains why the claim almost never wins; Pleading and Proving Trademark Fraud covers Rule 9(b) pleading and the self-audit that keeps you off the wrong end of it. The Trademark Integrity Toolkit is for when the abuse is the enforcement campaign itself — the fact pattern that produces defense-side fee awards.

What Shrinks a Recovery

A remedies plan that ignores the discounts is a budget, not a plan.

Section 1111 notice. No ® and no actual notice means no profits and no damages for that period. Audit it in the first week; it is the cheapest thing on this list and the most often skipped.

Delay and laches. The Lanham Act has no limitations period, so courts borrow state analogues and apply laches. Delay kills preliminary injunctions outright and is an express factor in the Second Circuit's disgorgement test, George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1540 (2d Cir. 1992). Whether Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014), and SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 580 U.S. 328 (2017), undermine that in a no-limitations statute is genuinely unsettled.

Geography. Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959), still limits a regional registrant's injunction against a good-faith remote user — a doctrine under real strain when both parties sell online.

Merits defenses that zero the case. Abandonment, fair use, expressive use, and priority each convert a remedies problem into a liability problem.

The Marksy documents that carry these: Proving and Defeating Trademark Abandonment, for the three-year presumption and the intent-to-resume evidence answering it — read it the moment an answer raises non-use; Raising a Trademark Fair Use Defense, for the classic and nominative doctrines that often resolve on the accused packaging alone; Litigating Expressive-Use Trademark Disputes After Jack Daniel's, for the narrowed Rogers screen that has measurably improved plaintiffs' odds in parody-adjacent cases; and Where Your Trademark Rights End, for the territorial limits that shape how wide an order can be drawn. The consolidated view is the Trademark Defenses Toolkit.

Neighboring Remedy Systems

Trademark is rarely the only claim, and the other statutes are sometimes better.

Trademark Dilution Under the TDRA matters here for one reason: dilution money requires the willfulness that infringement money no longer does. Bringing and Defending a Federal Dilution Claim and the Trademark Dilution Claim Checklist tell you whether the fame threshold is reachable before you plead a count that will only ever produce an injunction.

Cybersquatting and the ACPA supplies the § 1117(d) election — $1,000 to $100,000 per domain, willfulness presumed under § 1117(e) where the registrant lied to the registrar. When speed beats money, UDRP vs. Federal Lawsuit frames the trade-off and Filing a UDRP Complaint to Recover a Domain is the sixty-day path to transfer with no damages attached.

What Copyright Registration Actually Buys You is essential in any logo dispute, because 17 U.S.C. §§ 504(c) and 505 offer statutory damages and fees the Lanham Act gives only in counterfeiting cases; Filing a Copyright Infringement Complaint in Federal Court covers pleading both counts together. Trade Secrets and the DTSA is worth knowing when an employee took the customer list along with the brand files: the DTSA has its own civil seizure, exemplary damages up to twice the award, and fees for bad-faith claims.

Gray Market Goods: The First Sale Doctrine, Material Differences, and Parallel Imports covers the fact pattern where the goods are genuine and the remedy set is narrower than clients expect; the Gray Market and Parallel Import Toolkit is the full treatment.

Finally, Sending and Fighting a DMCA Takedown covers the fastest remedy in intellectual property — a 17 U.S.C. § 512 notice that removes content in hours — along with the § 512(f) misrepresentation exposure that comes with sending a bad one.

A Suggested Reading Path

If you have a live infringement and need it stopped this month.

Pre-Litigation Enforcement Checklist — one hour, and it tells you what you are missing.
Federal Court vs. TTAB — five minutes, and it prevents a very expensive mistake.
Preliminary Injunctions in Trademark Cases — the standard you must meet.
Moving for a TRO or Preliminary Injunction — the thirteen stages, worked in parallel with (5).
Preliminary Injunction Motion Checklist — the cover sheet for the file.

If you are pricing a case before authorizing a complaint.

What a Trademark Win Is Worth — the base rates, honestly stated.
Trademark Monetary Recovery Checklist — Phases 1 through 3, which set the theory before the fee arrangement.
Stage 14 of Proving Trademark Damages and Disgorging Profits — the end-to-end cost and timeline picture.
Running a Full Trademark Clearance Search — because the fee risk runs both ways.

If the goods are fake. Start at Trademark Counterfeiting, then split: offshore sellers and imports go to Stopping Counterfeits at the Border; a domestic warehouse goes to the seizure and TRO material in Moving for a TRO or Preliminary Injunction; an ongoing problem goes to the Anticounterfeiting Program Checklist.

If you are defending. Read Preliminary Injunctions in Trademark Cases for the rebuttal arguments and the delay defense, Phase 11 of the Preliminary Injunction Motion Checklist for the opposition sequence, Stage 7 of Proving Trademark Damages and Disgorging Profits for apportionment, and the Trademark Defenses Toolkit for everything that ends the case earlier.

If you have won and need to collect. Stages 12 and 13 of Proving Trademark Damages and Disgorging Profits, then Phases 11 and 12 of the Trademark Monetary Recovery Checklist.

Primary Authorities

| Authority | One-line holding or rule | |---|---| | 15 U.S.C. § 1116(a) | Injunction power on equitable principles; TMA presumption of irreparable harm; nationwide service; thirty-day compliance report; contempt | | 15 U.S.C. § 1116(d) | Ex parte seizure on seven findings; sealed order; 10-to-15-day hearing; wrongful-seizure action | | 15 U.S.C. § 1117(a) | Profits, damages, and costs subject to equity; defendant proves deductions; treble damages; "just sum" adjustment; fees in exceptional cases; compensation not a penalty | | 15 U.S.C. § 1117(b)-(e) | Trebling plus mandatory fees for intentional counterfeiting; statutory damages of $1,000–$200,000 per counterfeit mark per type of goods ($2,000,000 if willful); $1,000–$100,000 per cybersquatted domain; willfulness presumed on false registrar data | | 15 U.S.C. §§ 1111, 1118, 1119, 1120 | No profits or damages before ® display or actual notice; destruction of infringing articles; power to cancel or rectify a registration; damages for a fraudulently procured registration | | 18 U.S.C. § 2320 | Criminal trafficking in counterfeit goods, with enhanced penalties for repeat offenses and bodily injury | | Fed. R. Civ. P. 65; 54(d) | Injunction procedure — fourteen-day ex parte limit, security, specificity, who is bound; costs presumptive and a fourteen-day fee motion | | 28 U.S.C. §§ 1292(a)(1), 1920, 1961 | Interlocutory appeal of injunction orders; taxable costs; automatic post-judgment interest | | eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) | Four-factor test governs permanent injunctions; no categorical presumptions | | Winter v. NRDC, Inc., 555 U.S. 7 (2008) | Preliminary relief requires irreparable harm that is likely, not merely possible | | Nichino Am., Inc. v. Valent U.S.A., LLC, 44 F.4th 180 (3d Cir. 2022) | The TMA presumption shifts the burden of production only, and drops out once rebutted | | Schmidt v. Lessard, 414 U.S. 473 (1974) | Rule 65(d) specificity is not a technicality; an order may not incorporate other documents | | Taggart v. Lorenzen, 587 U.S. 554 (2019) | No civil contempt where a fair ground of doubt exists that the order barred the conduct | | Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020) | Willfulness is not a precondition to disgorgement, but mental state is highly important | | Dewberry Grp., Inc. v. Dewberry Eng'rs Inc., 604 U.S. 321 (2025) | "Defendant's profits" means the named defendant's profits, not an affiliate's | | Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942) | The infringer bears the burden of apportionment; uncertainty favors the mark owner | | Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947) | Absent fraud or palming off, an injunction may satisfy the equities by itself | | Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977) | Prospective corrective advertising needs an economic rationale; FTC 25% benchmark, scaled | | Zazu Designs v. L'Oreal, S.A., 979 F.2d 499 (7th Cir. 1992) | A corrective advertising award may not exceed the value of the mark | | Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) | An exceptional case stands out on substantive strength or litigation conduct | | Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308 (1999) | No prejudgment asset freeze in an action solely for money damages | | Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) | A regional registrant may not enjoin a good-faith remote user absent likely expansion |

Forms and Templates

Trademark Cease-and-Desist Letter — Template — the document that fixes the notice date, which is a fee-shifting fact and a willfulness fact. Send it before you plan the injunction timetable, and calendar the response deadline rather than waiting on it.
Trademark Coexistence Agreement — Template — the architecture most injunction fights actually settle into: defined fields of use, a phase-out schedule, and mutual covenants. Pull it out within thirty days of a preliminary ruling, when both sides still have options.
Trademark License Agreement — Template — the royalty rate in a signed license is the anchor that makes a holdover royalty claim work, and the quality-control clauses are the loss-of-control evidence in the harm declaration. Draft it as though litigation is coming.
UDRP Complaint — Template — for the domain half of an enforcement problem, where transfer in weeks beats damages in years.
Trademark Portfolio Inventory — Template — the register of marks, classes, and ® usage that a § 1111 notice audit runs against; keep it current and the first week of the case gets shorter.

Related Toolkits and Checklists

Trademark Litigation Toolkit: From Complaint to Judgment in Federal Court — the procedural spine this toolkit hangs on: pleading, jurisdiction, discovery, dispositive motions, and trial. Read it first if you are new to the case type; this toolkit assumes it.
Brand Enforcement Toolkit: Watching, Warning, and Escalating — the stage before remedies, and the stage after an order issues. Its monitoring routine is what produces contempt evidence.
Evidence and Expert Witness Toolkit for Trademark and Copyright Disputes — authentication, surveys, accounting experts, and Rule 702 practice. Reach for it when your remedies theory needs a number a court will accept.
Trademark Defenses Toolkit: Fair Use, Free Speech, Priority, Abandonment, and Estoppel — every argument that shrinks or eliminates a recovery, collected.
Online Brand Protection Toolkit: Domains, Marketplaces, Platforms, and Search Ads — the non-judicial remedies that resolve most internet-native disputes faster and cheaper than § 1116.
Copyright Enforcement Toolkit: Takedowns, Demands, and Federal Litigation — the parallel remedy set for the logo, the packaging art, and the product photography, where statutory damages and fees are available without a counterfeiting finding.
The Solo and Small Firm IP Practice Toolkit — how to run a remedies matter without an eight-person team, including when to decline one; the Brand Owner's Master Toolkit puts the whole practice area in sequence if you want to see where remedies sit.