[This is a summary of key points from a broader TM webinar in May 2025, available here: Trademark Infringement: Practical Tips for Protection, Enforcement and Damages – Federal Bar Association.]
Let’s skip the platitudes. Trademarks can be significant business assets, multipliers when managed, liabilities, and lost opportunities when neglected. Below are five practical strategies for brand owners (from scrappy founders to established consumer brands) to protect, enforce, and monetize their trademarks without lighting money on fire.
1) Choose a distinctive mark and clear it like you mean it
If your name looks and sounds like everyone else’s, you’ve traded short-term convenience for long-term enforcement headaches. Select a distinctive mark, and conduct a real clearance sweep (federal, common-law, domains, app stores, marketplaces, and the social handles you’ll actually use).
Then file fast, an Intent-to-Use (1(b)) application can lock in priority while you build, and convert to Use (1(a)) when ready. This is because the US trademark legal system is based on first to use, not first to file. However, filing an Intent-to-Use (1(b)) application can lock in the date of first use to the date of the application filing.
Pop-culture cautionary tale: Twitter’s hard pivot to “X” shows how single-letter branding collides with crowded registers; analysts flagged hundreds of existing “X” marks and forecasted conflict risk. Use it as your reminder that distinctiveness + clearance beats clever minimalism.
Do this next: shortlist 3 to 5 names, run a professional search, reserve matching domains/handles, and file ITU(s) now, don’t wait for launch.
2) Treat registration and use like a compliance program, not an afterthought
Obtaining a federal trademark registration is step one; consistent use of the mark as registered, timely renewals, and a simple docketing/management system keep that asset alive and enforceable. Drifting logos, sloppy taglines, or forgotten renewals are how trademarks get weakened or abandoned. Build the habit.
Do this next: centralize brand assets, lock artwork/templates, calendar all maintenance dates with 30-day cushions, and train your team not to “improve” the logo without organization-wide clearance, especially legal.
3) Monitor the digital landscape (and think global early)
Most infringements now surface online first. Use automated monitoring for marketplaces, social, domains, and ads; escalate real problems, ignore the noise. If you’re manufacturing or selling abroad (or will be), sequence international filings strategically so customs and platforms can help you. AI tools are no longer “nice to have” for watch, search, and portfolio hygiene; they are force multipliers.
What the courts are signaling online:
(i) virtual goods/NFTs aren’t a free pass. Hermès won a jury verdict and an injunction against “MetaBirkin” NFTs, signal received: brand owners can enforce in Web3;
(ii) crypto-native brands enforce too. Yuga Labs (BAYC) prevailed against a copycat NFT project, and the Ninth Circuit has weighed in as recently as July 2025.
4) Enforce with a calibrated C&D, and litigate only when it pencils out
A well-crafted cease-and-desist letter (professional tone, evidence of your rights and the other side’s use, clear asks) resolves a surprising percentage of cases. Save “nastygram energy” for willful actors.
Litigation is for egregious scenarios or when business objectives demand it. Expect six figures fast, seven figures if it runs. Build leverage early; spend only where the ROI is real.
Where parody stops working: In Jack Daniel’s v. VIP Products, SCOTUS narrowed the safe harbor for “expressive” uses when the accused product uses another’s mark as a source identifier. Translation: parody dog toys aren’t bulletproof. Expect more conventional confusion analysis.
Do this next: stand up a 2-step playbook,
(1) C&D with realistic terms;
(2) fast-file complaint + early injunction only when needed. Document willfulness.
5) Document like you’ll sue tomorrow, and pick the right damages theory
If you must litigate, your file should already show first use, continuous use, ad spend, packaging, and actual confusion (screenshots with timestamps). Then choose your remedy path: actual damages, infringer’s profits, trebling for willfulness, and statutory damages for counterfeiting, plus fees in “exceptional” cases. Courts avoid double recovery, so build a clean record and match theory to facts.
Do this next: adopt an internal “evidence kit” policy. Every suspected infringement gets a dated workbook with copies of the use, confusion reports, and a running damages memo.
Bottom line
Brand protection isn’t about saber-rattling; it’s disciplined selection, use, monitoring, and proportionate enforcement with litigation as a business tool, not a knee-jerk reaction. We do the boring but essential things right, so clients spend less to maximize TM value.