What this practice covers.
Two distinct workstreams, often pursued in parallel. Enforcement is the work that protects a mark from unauthorized use — pre-litigation cease-and-desist work, platform takedowns, domain dispute proceedings, and federal court litigation under the Lanham Act when escalation is required. Licensing is the work that grants others authority to use a mark on agreed terms — license drafting and negotiation, quality-control structures that preserve the mark's validity, and royalty enforcement when arrangements go sideways. Most engagements involve one or the other; some involve both, as when an enforcement matter resolves through a license or a licensing program fails to police licensees and produces an enforcement question.
Enforcement: the work that protects the mark.
Most enforcement engagements never reach federal court. The pre-litigation arsenal resolves the majority of matters; litigation is the escalation path when it is needed.
The pre-litigation arsenal
Cease-and-desist letters remain the most common opening move. A well-drafted demand identifies the rights asserted, the infringing conduct, the remedies sought, and a response deadline — and lays the groundwork for litigation if the letter is ignored. DMCA takedown notices under 17 U.S.C. § 512 address online infringement hosted by service providers, with most major platforms removing infringing content within 24 to 72 hours of a compliant notice. UDRP proceedings under ICANN's Uniform Domain-Name Dispute-Resolution Policy address cybersquatting and bad-faith domain registrations, with decisions typically issuing within 60 to 90 days. Platform takedown procedures — Amazon, eBay, Shopify, Instagram, TikTok, and others maintain their own brand-protection programs — provide enforcement against e-commerce and social-media infringement that operates outside the DMCA framework.
Federal court litigation
When pre-litigation work fails or the matter is too consequential for letters and takedowns, federal court is the forum. Federal claims arise under the Lanham Act: trademark infringement of registered marks under 15 U.S.C. § 1114, false designation of origin and unfair competition under § 1125(a), dilution by blurring or tarnishment for famous marks under § 1125(c), and cybersquatting under the Anticybersquatting Consumer Protection Act, § 1125(d). Remedies under §§ 1116–1118 include injunctive relief, recovery of the infringer's profits, actual damages, treble damages in exceptional cases, attorney fees, and destruction of infringing articles. For counterfeiting matters, § 1116(d) authorizes ex parte seizure orders. Texas state-law claims for common-law trademark infringement, unfair competition, and dilution under Tex. Bus. & Com. Code § 16.103 are typically pleaded alongside the federal claims as supplemental.
Defensive work
The reverse posture: a client receives a cease-and-desist letter, or is named as a defendant in a federal infringement action, or faces a declaratory judgment action by a mark holder seeking a declaration of non-infringement or invalidity. The response is often where the matter gets resolved — a well-positioned response to a C&D can open settlement, narrow the dispute, or surface defenses (laches, fair use, first sale, parody, descriptive use) that change the leverage.
Licensing: the work that monetizes the mark.
Trademark licensing grants others authority to use a mark on terms that preserve the mark's validity, generate compensation, and align with the mark holder's strategic objectives. Three components of the work matter most.
License drafting and negotiation
The structural decisions: exclusive versus non-exclusive grant, territorial scope, field of use limitations, term and renewal mechanics, royalty structure (running royalties, minimum guarantees, lump-sum payments, milestone-based structures), audit rights, sublicensing permissions, assignment provisions, and termination triggers. Each is a negotiation point with downstream consequences. Standard form licenses exist; they are starting points, not deliverables.
Quality control and the naked licensing problem
Trademark licenses are different from copyright or patent licenses in one consequential respect: the licensor must maintain control over the nature and quality of the goods or services offered under the licensed mark, or risk losing the mark entirely. A license without adequate quality-control provisions — or with quality-control provisions that exist on paper but are not actually exercised — can constitute naked licensing, a form of abandonment under 15 U.S.C. § 1127. The leading case, Eva's Bridal Ltd. v. Halanick Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011), illustrates the consequence: a mark holder who failed to police licensee quality lost the mark. Quality control is not a clause to drop into a template. It is the substance of what makes a trademark license legally effective. Practical structure includes inspection rights, defined quality standards, sample submission requirements, audit rights, and termination for failure to meet standards.
Royalty enforcement and audit
Licenses include payment obligations; payment obligations get disputed. Audit provisions in a well-drafted license give the licensor access to the licensee's books and records to verify reported royalties. Disagreements arise over what's reportable, what's deductible, and what the audit reveals. Termination for material breach — non-payment, out-of-scope use, quality failures — is the licensor's principal leverage and is the procedural fulcrum when arrangements deteriorate.
How this practice handles enforcement and licensing.
The work is sequenced according to the matter — different for an enforcement engagement than for a license drafting, but with a common structure.
For enforcement: read the situation, identify the rights at issue, evaluate likelihood of success and counterparty exposure, recommend strategy. For licensing: understand the business objective, the parties, the proposed scope, and the risk allocation.
Enforcement: draft the cease-and-desist, file the DMCA notice or UDRP, initiate the platform takedown, or open settlement discussions. Licensing: term sheet, initial draft, or response to the opposing party's draft.
Most matters resolve through negotiation, whether enforcement settlement or license execution. Strategic positioning during pre-litigation or term-sheet phases determines what resolution looks like.
Federal court litigation for enforcement matters that do not resolve. Structured license disputes (audit demands, breach notices, termination) for licensing matters that go sideways. Closing and execution for licenses that come together.
What to expect.
Timing varies widely by matter. Cease-and-desist responses typically come within thirty days of the demand. DMCA takedowns resolve within 24 to 72 hours on major platforms. UDRP proceedings run 60 to 90 days from filing to decision. Federal court litigation runs 18 months to several years depending on the matter. License drafting typically runs 2 to 6 weeks for an initial draft from an established framework, longer with active negotiation between counsel.
Cost structure is hybrid. Defined pre-litigation tasks — a single cease-and-desist, a DMCA takedown, a UDRP filing, a license drafted from an established framework — are scoped on a defined fee. Federal court litigation is hourly with phase-by-phase budgets estimated at engagement and updated as the matter develops. Complex licensing with active negotiation is typically hybrid: a defined fee for the initial draft, hourly for negotiation. The right structure for a given matter is set in the initial strategy call.
Frequently asked questions.
I just received a cease-and-desist letter. What's the deadline?
Whatever the letter says, or whatever is reasonable under the circumstances. There is no statutory response deadline for a C&D; the sender sets the demand and the recipient evaluates it against the substance. A typical demand allows thirty days. The right response depends on the merits of the claim, the available defenses, the relative strength of the parties, and the business stakes. Silence is rarely the right answer; a measured response frequently opens a path to resolution that does not involve litigation.
What's a UDRP proceeding, and when is it the right tool?
The Uniform Domain-Name Dispute-Resolution Policy is an administrative proceeding for resolving disputes over generic and country-code top-level domain names. The complainant must show that the domain is identical or confusingly similar to a mark in which it has rights, that the registrant has no rights or legitimate interests in the domain, and that the domain was registered and is being used in bad faith. UDRP is faster and cheaper than ACPA litigation in federal court, but it produces only transfer or cancellation of the domain — no damages, no attorney fees, and no precedential value. The right tool for domains held by clear cybersquatters; less useful where damages or precedent are wanted.
What is "naked licensing" and why does it matter?
Naked licensing is the grant of trademark rights without retention of adequate quality control over the licensee's use. Because a trademark's legal function is to identify a consistent source of goods or services, a license that abandons quality control abandons the mark — the licensor loses the ability to enforce against anyone, not just the licensee. The leading case, Eva's Bridal Ltd. v. Halanick Enterprises, Inc., 639 F.3d 788 (7th Cir. 2011), found abandonment where the licensor had exercised no meaningful control over the licensee for years. The practical implication: quality-control provisions in a license must be both drafted and exercised, with documented inspections, samples, and corrective-action records.
What if the infringer is on Amazon, Instagram, or another platform?
Platform takedown procedures are usually the first move. Amazon Brand Registry, the Instagram and Meta brand-protection programs, eBay VeRO, Shopify's IP infringement process, and similar programs on TikTok, Etsy, and other platforms allow registered brand owners to report infringement through structured intake procedures. These programs typically resolve within days for clear cases. For repeat infringers, sophisticated counterfeit operations, or platforms that do not respond adequately, DMCA takedowns or federal court action becomes the escalation path.
Can the dispute settle without litigation?
Yes, and most do. Settlement structures vary with the matter: coexistence agreements (parties agree on the bounds of permitted use), undertakings (the infringer agrees to cease and stipulates to consequences for breach), licenses (the dispute resolves into an authorized use), buy-out agreements (one party purchases the rights from the other), and outright withdrawal with or without consideration. The settlement leverage is built during the pre-litigation phase — what the record shows about the parties' positions and what the demand letter establishes about the claim's substance.
What about counterfeits?
Counterfeit cases have additional tools. 15 U.S.C. § 1116(d) authorizes ex parte seizure orders, allowing federal marshals to seize counterfeit goods and records without prior notice to the defendant. Customs recordation under 19 U.S.C. § 1526 and registration with U.S. Customs and Border Protection enables interception of imported counterfeits at the border. Statutory damages under 15 U.S.C. § 1117(c) are available against counterfeiters without proof of actual damages, with substantial ranges that increase for willful counterfeiting. Counterfeit cases are typically pursued in federal court with the full Lanham Act toolkit deployed.