Guides · Trademark Litigation
Trademark Remedies
The most common remedy in a trademark case is an injunction ordering the defendant to stop.
· Law checked through October 21, 2026
In Short
Money is also available: the defendant's profits, the owner's damages, and costs, all subject to principles of equity. Counterfeiting carries much heavier consequences, including mandatory trebling in most cases and statutory damages of up to $2 million per mark per type of goods. Attorney's fees are awarded only in exceptional cases, and a winning defendant can recover them too.
Common situations.
- A competitor using a confusingly similar name earned large profits but caused the owner no provable lost sales.
- A counterfeiter's records are incomplete, so actual profits cannot be measured.
- A parent company's affiliates sold the infringing goods, but only the parent was sued.
- A defendant that won asks whether it can recover its fees.
The remedies at a glance.
| Remedy | Source | Key points |
|---|---|---|
| Injunction | 15 U.S.C. § 1116(a) | Rebuttable presumption of irreparable harm once infringement is found |
| Defendant's profits | § 1117(a) | Owner proves sales; defendant proves costs and deductions. Willfulness is not required |
| Owner's damages | § 1117(a) | Actual damages, which the court may increase up to three times |
| Costs | § 1117(a) | Court costs of the action |
| Attorney's fees | § 1117(a) | Exceptional cases only; available to either side |
| Counterfeiting | § 1117(b), (c) | Treble profits or damages plus fees, unless extenuating circumstances; or statutory damages |
| Cybersquatting | § 1117(d) | Statutory damages of $1,000 to $100,000 per domain name |
| Destruction | § 1118 | Infringing labels, packaging, and goods may be ordered delivered up and destroyed |
Monetary relief is subject to the limits described in other guides: no profits or damages for a registered mark that was not marked with the registration notice, unless the defendant had actual notice (§ 1111), and laches can bar recovery for the period of the owner's delay. See Defenses in Trademark Cases.
Injunctions.
A court may enjoin infringement according to principles of equity (§ 1116(a)). Since the Trademark Modernization Act of 2020, an owner that proves infringement is entitled to a rebuttable presumption of irreparable harm when seeking a permanent injunction. The injunction must describe the prohibited acts in reasonable detail (Fed. R. Civ. P. 65(d)). Courts can tailor relief to the confusion found, for example by requiring different packaging or a disclaimer rather than barring all use. See Emergency Relief: TROs, Preliminary Injunctions, and Seizures.
Defendant's profits.
- No willfulness requirement. Willfulness is an important consideration, but not a prerequisite, for an award of profits (Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020)). The Fifth Circuit already followed this rule, weighing factors such as the defendant's intent, whether sales were diverted, the adequacy of other remedies, the owner's delay, the public interest in making misconduct unprofitable, and whether the case involves palming off (Quick Techs., Inc. v. Sage Grp. PLC, 313 F.3d 338 (5th Cir. 2002)).
- Burden of proof. The owner must prove only the defendant's sales. The defendant must prove its costs and any deductions (§ 1117(a)).
- Named defendant only. The profits are those of the defendant actually sued, not its unnamed corporate affiliates, unless the court disregards the corporate form (Dewberry Grp., Inc. v. Dewberry Eng'rs Inc., 604 U.S. ___ (Feb. 26, 2025)).
- Adjustment. If profits are inadequate or excessive, the court may enter judgment for a sum it finds just. Any adjustment must be compensation, not a penalty (§ 1117(a)).
Owner's damages.
The owner may recover the damages it sustained, which the court may increase up to three times actual damages, again as compensation rather than a penalty (§ 1117(a)). Common measures include lost sales, harm to reputation, a reasonable royalty where the parties had or would have had a license, and the cost of corrective advertising to dispel confusion in the market (see Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977)). Damages must be proved with reasonable certainty.
Counterfeiting.
A counterfeit is a spurious mark identical with, or substantially indistinguishable from, a registered mark, used on the goods or services for which it is registered (§§ 1116(d), 1127).
- Trebling. For intentional use of a mark known to be counterfeit, the court must award three times the profits or damages, whichever is greater, plus a reasonable attorney's fee, unless it finds extenuating circumstances. It may also award prejudgment interest (§ 1117(b)).
- Statutory damages. Instead, the owner may elect, at any time before final judgment, statutory damages of $1,000 to $200,000 per counterfeit mark per type of goods or services sold, or up to $2,000,000 per mark per type of goods or services if the use was willful (§ 1117(c)). Statutory damages are useful when the counterfeiter's records are missing or unreliable.
Attorney's fees.
The court may award reasonable fees to the prevailing party in exceptional cases (§ 1117(a)). In the Fifth Circuit, a case is exceptional if it stands out from others in the substantive strength of a party's position or the unreasonable manner in which it was litigated, judged on the totality of the circumstances (Baker v. DeShong, 821 F.3d 620 (5th Cir. 2016)). The decision is reviewed for abuse of discretion (Alliance for Good Gov't v. Coal. for Better Gov't, 919 F.3d 291 (5th Cir. 2019)).
Dilution.
An owner that proves dilution is entitled to an injunction. Profits, damages, and the other monetary remedies are available only if the diluting mark was first used in commerce after October 6, 2006, and the defendant willfully intended to trade on the famous mark's recognition or to harm its reputation (§ 1125(c)(5)).
Texas remedies.
| Claim | Remedies | Source |
|---|---|---|
| Infringement of a Texas-registered mark | Injunction; the infringer's profits or the registrant's damages; destruction of infringing materials. Up to three times profits and damages, and attorney's fees to the prevailing party, if the infringer acted with actual knowledge of the mark or in bad faith. Damages only if the infringer intended to cause confusion or deceive | Tex. Bus. & Com. Code § 16.102(b)-(e) |
| Counterfeits and imitations of a Texas-registered mark | Injunction; profits or damages; destruction; up to three times and fees for knowing or bad-faith conduct | § 16.104 |
| Dilution of a mark famous in Texas | Injunction in the area where the mark is famous; other remedies if the dilution was willful | § 16.103(c) |
Sources.
- 15 U.S.C. §§ 1111, 1116, 1117, 1118, 1125(c)(5), 1127.
- Fed. R. Civ. P. 65(d).
- Tex. Bus. & Com. Code §§ 16.102-16.104.
- Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020).
- Dewberry Grp., Inc. v. Dewberry Eng'rs Inc., 604 U.S. ___ (Feb. 26, 2025).
- Quick Techs., Inc. v. Sage Grp. PLC, 313 F.3d 338 (5th Cir. 2002).
- Baker v. DeShong, 821 F.3d 620 (5th Cir. 2016).
- Alliance for Good Gov't v. Coal. for Better Gov't, 919 F.3d 291 (5th Cir. 2019).
- Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365 (10th Cir. 1977).
This guide is general information, not legal advice. Law checked through October 21, 2026. See the Disclaimer.