Enforcing Your Trademark Rights

By Hank FasthoffJune 9, 2026

A federal trademark registration provides the owner a set of enforcement tools that common law rights alone don't offer. Nationwide constructive notice, a presumption of validity, the ability to record with U.S. Customs, and the potential for statutory damages in counterfeiting cases all flow from registration. But exercising those rights is the responsibility of the registration owner, as the USPTO doesn't monitor the marketplace, doesn't send alerts when someone files a confusingly similar application, and doesn't initiate enforcement actions.

Monitoring for Infringement

Monitoring third party use of a trademark is the first step in the "enforcement" process. If the owner doesn't know about an infringing use, the owner can't stop it.

Trademark watch/monitoring services are available to monitor newly-filed trademark applications and the USPTO's Official Gazette. This is the most cost-effective form of monitoring because it catches potential conflicts at the application stage.

Online monitoring includes searching e-commerce platforms (Amazon, eBay, Etsy), social media, domain name registrations, Google Ads, and general web searches for unauthorized uses of the mark. The volume of online infringement has increased dramatically with the growth of ecommerce, and automated monitoring tools can catch new listings and uses faster than manual searches.

Industry monitoring means keeping an eye on trade publications, industry directories, trade show exhibitors, and competitor branding. Infringement in the same industry is the most dangerous kind because it directly affects the consumers most likely to be confused.

Cease and Desist Letters

The cease and desist letter is usually the first enforcement step. A well-drafted letter identifies the owner's registration, describes the infringing use, explains why the use creates a likelihood of confusion, and demands that the infringer stop using the mark, surrender any infringing domain names, and destroy infringing materials. The letter typically sets a deadline for compliance and warns that the owner will pursue legal remedies if the infringer fails to respond.

Cease and desist letters resolve a large percentage of trademark disputes without litigation. Many infringers, particularly small businesses that adopted a mark without conducting a clearance search, will comply rather than face the cost of defending a trademark claim. The letter should spell out the legal risk and the steps to a resolution.

The tone and content of the letter depend on the circumstances. An aggressive letter to a willful infringer (a counterfeiter, a cybersquatter, or a competitor who copied the mark deliberately) is designed to signal that litigation is coming. A more measured letter to a small business that appears to have adopted a similar mark innocently opens the door to a negotiated resolution. The strategic choice between the two depends on the client's objectives and the strength of the case.

Negotiated Resolutions

When a cease and desist letter opens a dialogue rather than ending the dispute, the parties may negotiate a resolution that avoids litigation. The most common negotiated outcomes are consent agreements, coexistence agreements, and phase-out agreements.

A consent agreement is filed with the USPTO in an attempt to overcome a likelihood of confusion refusal. It typically specifies conditions under which both parties agree to use their respective marks without confusion, such as geographic limitations, product line restrictions, or differences in trade dress. While often accepted, the USPTO is not required to accept a consent agreement.

A coexistence agreement is a private contract between the parties that divides the market or establishes conditions for concurrent use. It may limit each party's use to certain geographic areas, product categories, or trade channels. A well-drafted coexistence agreement includes provisions for what happens if one party expands beyond its agreed territory or product line.

A phase-out agreement allows the infringer a defined period to transition to a new mark. This is appropriate when the infringer has built goodwill in the infringing mark and an immediate transition would cause disproportionate hardship. Phase-out periods typically run six months to two years, with specific milestones for rebranding.

Federal Litigation

When enforcement requires court action, the Lanham Act provides the framework. A trademark infringement claim under Section 32 (for registered marks) or Section 43(a) (for unregistered marks or trade dress) requires the plaintiff to prove ownership of a valid mark and a likelihood of confusion between the plaintiff's mark and the defendant's use.

The remedies available in federal trademark litigation include injunctive relief (a court order requiring the defendant to stop using the infringing mark), actual damages (the plaintiff's lost profits attributable to the infringement), disgorgement of the defendant's profits earned from the infringing use, statutory damages in counterfeiting cases (up to $2 million per counterfeit mark per type of goods in willful cases), and attorney's fees in exceptional cases.

Preliminary injunctions are particularly important in trademark cases because the infringement continues (and the damage to the mark accumulates) during the time it takes to litigate the case to final judgment. A preliminary injunction stops the infringing use while the case is pending, which can take two to three years in most federal courts. The standard for a preliminary injunction requires the plaintiff to show a likelihood of success on the merits, a likelihood of irreparable harm, a balance of hardships in the plaintiff's favor, and that the injunction serves the public interest. Under § 1116(a), a trademark plaintiff who shows a likelihood of success receives a rebuttable presumption of irreparable harm.

E-Commerce and Online Enforcement

Online infringement requires a different set of enforcement tools. Most major ecommerce platforms (Amazon, eBay, Etsy, Alibaba) have brand protection programs that allow trademark owners to report infringing listings for removal. Amazon's Brand Registry, eBay's VeRO program, and similar programs provide registered trademark owners with the potential to remove counterfeit and infringing listings without filing a lawsuit.

Domain name disputes are handled through the Uniform Domain-Name Dispute-Resolution Policy (UDRP), a policy adopted by ICANN and administered by approved dispute resolution providers including the World Intellectual Property Organization (WIPO), or through the Anticybersquatting Consumer Protection Act (ACPA) in federal court. UDRP proceedings are faster and less expensive than ACPA litigation, but the only remedy available is transfer or cancellation of the domain name. ACPA provides the additional remedy of statutory damages up to $100,000 per domain name.

Social media infringement can be addressed through the various platforms' intellectual property reporting mechanisms. Most platforms will remove content or suspend accounts that use trademarks in ways that create confusion, though the process varies by platform and enforcement can be inconsistent.

Customs Recordation

Recording a trademark with U.S. Customs and Border Protection allows Customs to detain and seize imported goods bearing counterfeit or infringing marks at the United States border. The recordation process is separate from the USPTO registration and requires filing an application with Customs, along with information about the goods to be excluded.

Customs recordation is one of the most underused enforcement tools available to trademark owners. For businesses that compete with imported counterfeits or gray-market goods, it provides a government agency actively screening shipments at the border for infringing products. The cost of recordation is modest relative to the protection it provides.

The Enforcement Mindset

Effective trademark enforcement requires consistency. A right that the owner enforces against some infringers but ignores when others use it sends a signal that the mark isn't important enough to defend. Courts and the TTAB can consider the owner's enforcement history when evaluating the strength of the mark and the scope of protection it deserves. An owner who has sent cease and desist letters, filed oppositions, and litigated infringement claims over the life of the registration is in a stronger position than one who tolerated years of third-party use before taking action.

A trademark owner's enforcement budget should be proportional to the value of the mark and the severity of the threat. A counterfeiting operation selling knockoff goods under the owner's exact mark justifies aggressive and immediate action. A small business using a somewhat similar mark in a distant geographic market for unrelated services may warrant a measured letter rather than a lawsuit. The goal is to protect the mark's distinctiveness and the owner's investment in the brand without spending more on enforcement than the threat justifies.