1. Assessing a Trademark Violation before Taking Legal Action
Start with the owner's rights and seller conduct. Compare marks, products, and customers before sending notice. A federal registration does not eliminate the need to prove an actionable use of the mark.
Confirm Rights, Priority, and Authorization
Federally registered marks may support claims under 15 U.S.C. § 1114; protectable unregistered marks may support § 1125(a). Check ownership, first-use records, licenses, and evidence of likely confusion. A trademark rights review may reveal prior authorization.
Compare sales channels, relevant customers, and signs of mistaken association. A past license may limit what the owner can demand.
Preserve Evidence and Identify the Seller
Save dated listings, advertisements, packaging, invoices, and customer complaints. Test purchases connect listings with delivered goods. Keep original order records, not screenshots alone. Storefront names may hide who receives payment.
Record each seller account, product identifier, delivery date, and shipment address. An attorney may seek preservation of transaction data before demanding removal.
2. Cease-and-Desist Letters and Pre-Litigation Enforcement
A demand letter identifies the mark, alleged misuse, and requested action. It can resolve or narrow the dispute. Its allegations should match the evidence available before discovery.
Preparing a Demand and Negotiating Compliance
An attorney can draft a supported demand and negotiate listing removal, packaging changes, remaining stock, or sales records. Federal law sets no universal response deadline. A trademark coexistence agreement may define permitted uses in separate markets.
Settlement terms can address unsold inventory, a discontinuance date, and written confirmation of compliance. If the seller disputes priority or authorization, the attorney can reassess the demand before litigation.
When the Seller Ignores the Letter
Continued sales may justify a platform complaint, investigation, or lawsuit. A platform can remove listings but cannot award damages. The USPTO's TTAB resolves registration disputes, not infringement injunctions.
Before filing suit, an attorney should identify the correct legal entity, court jurisdiction, and grounds for urgent relief. Removing one listing may leave other sales channels active.
| Route | Objective | Limit |
|---|---|---|
| Demand letter | Negotiate cessation | No binding court order |
| Platform report | Remove listings | No damages judgment |
| Lawsuit | Discovery and remedies | Proof and jurisdiction required |
Demand letter
- ObjectiveNegotiate cessation
- LimitNo binding court order
Platform report
- ObjectiveRemove listings
- LimitNo damages judgment
Lawsuit
- ObjectiveDiscovery and remedies
- LimitProof and jurisdiction required
3. Recovering Damages and Seeking Injunctive Relief
Remedies depend on the claim and available records. An attorney can evaluate losses, request financial discovery, and seek interim orders where justified.
Profits, Losses, and Counterfeit Statutory Damages
Section 1117(a) allows proven losses and defendant profits, subject to equity. The plaintiff proves sales; the defendant proves claimed deductions. Invoices, advertising records, diverted orders, and sales reports help test the claimed financial harm. Courts must avoid improper duplicate recovery.
Romag Fasteners v. Fossil holds that willfulness is not a prerequisite to profits for § 1125(a) infringement.
For qualifying registered-mark counterfeiting, § 1117(c) permits statutory damages instead of actual damages and profits: $1,000 to $200,000 per counterfeit mark per type of goods or services, or up to $2 million for willful use. Awards are discretionary. The calculation concerns each counterfeit mark and type of goods or services, not each individual item sold.
Section 1117(b) provides trebling and attorney fees for specified knowing counterfeiting, absent extenuating circumstances. Attorney fees under § 1117(a) generally require an exceptional case.
Injunctions, Destruction, and Seizure
A preliminary injunction may restrict use before trial. Section 1116(a) provides a rebuttable presumption of irreparable harm upon a finding of violation or likelihood of success on the merits, as applicable, but other conditions remain.
The owner must also support the urgency and requested scope of relief with evidence.
Section 1118 permits destruction of specified materials after a proven violation. Ex parte seizure under § 1116(d) requires qualifying counterfeiting and special safeguards.
4. Practical Pitfalls in Trademark Enforcement Cases
Premature notice can lead to disappearing listings or records. Identifying the correct seller and preserving original evidence matter before filing.
Corporate and Personal Liability
Officer status alone does not create personal liability; direct participation may.
In Dewberry Group v. Dewberry Engineers (2025), the Supreme Court rejected automatically adding nonparty affiliates' profits to the defendant's profits. Examine payment accounts and corporate records, with evidence preservation before litigation.
An ownership chart alone does not establish which entity made the relevant sales.
Criminal Counterfeiting Is a Separate Matter
18 U.S.C. § 2320 requires specific criminal counterfeiting elements. Ordinary civil infringement is not automatically a crime. Prosecutors decide whether to file charges; a private demand letter cannot promise criminal punishment.
5. Frequently Asked Questions
Can a Brand Owner Stop Resale of Genuine Products?
Not simply because resale lacks approval. The first-sale doctrine generally permits genuine resale. Material differences, misleading repackaging, or interference with legitimate quality controls can change the result.
Can a Former Licensee Keep Using a Mark After Termination?
It depends on the agreement, termination conditions, and inventory rights. Continued use outside the license may support enforcement, but the terms and sales history require review.
Preserve termination notices, renewal discussions, and post-termination marketing.
6. Reviewing Trademark Violation Claims with an Attorney
An attorney can assess rights, preserve seller records, draft demands, negotiate, identify defendants, and litigate damages or injunctions. Review is particularly useful before notice, after refused demands, or when listings and inventory may disappear.
Bring registration records, product samples, dated screenshots, licensing terms, and prior correspondence to that assessment.
13 Oct, 2026
