Remedies in a Trademark Case Under the Lanham Act

The short answer, expanded

Winning a trademark case produces two kinds of relief. The first is an order: the infringer must stop using the name, logo or packaging, usually with a short transition period and often with a sworn report back to the court. The second is money, which the Lanham Act allows in three categories at once, subject to the court's sense of what is fair: the defendant's profits, the plaintiff's damages and the costs of the action.

Most owners care about the order. Money follows only when the owner can prove either what the infringer sold under the mark or what the owner itself lost, and both take evidence that has to be gathered deliberately. Whether you have a claim at all is a separate question, covered in trademark infringement basics. This article assumes infringement is proved and asks what comes next.

The injunction: the remedy most owners actually want

Section 34 of the Lanham Act, 15 U.S.C. § 1116(a), gives federal courts power to grant injunctions according to the principles of equity to prevent violations of a registered mark or of section 43(a), (c) or (d). An injunction can be preliminary, entered early in the case to hold the position while the case is decided, or permanent, entered with the final judgment.

For years courts disagreed about whether a trademark owner had to prove irreparable harm separately or could be presumed to suffer it. The Trademark Modernization Act of 2020 settled the question in the statute. Under § 1116(a) as amended, a plaintiff is entitled to a rebuttable presumption of irreparable harm on a finding of a violation, for a permanent injunction, or on a finding of likelihood of success on the merits, for a preliminary injunction or temporary restraining order. The defendant may rebut the presumption, for example by showing the plaintiff waited a long time before suing, but the starting point now favors the owner.

The same section lets the court require the defendant to file, within 30 days after service of the injunction or a longer period the court sets, a sworn report describing how it has complied. A well-drafted order also reaches the practical places the name lives: the domain, social media handles, online listings, signage, vehicle wraps and remaining inventory.

The infringer's profits

Under 15 U.S.C. § 1117(a), a prevailing plaintiff is entitled, subject to the principles of equity, to recover the defendant's profits. The statute allocates the proof in the owner's favor: the plaintiff is required to prove the defendant's sales only, and the defendant must prove all elements of cost or deduction it claims. An infringer that cannot document its costs risks a profits award measured by gross revenue.

Two rules shape the award. First, the court may adjust it. If the court finds the profits figure inadequate or excessive, it may enter judgment for whatever sum it finds just according to the circumstances. Second, willfulness is not a precondition. In Romag Fasteners, Inc. v. Fossil, Inc. (2020) the Supreme Court held that a plaintiff suing under section 43(a) does not have to show willful infringement to obtain the defendant's profits, while noting that the defendant's state of mind remains a highly important consideration in the equitable weighing.

Your own damages, and the three-times increase

The owner may also recover any damages it sustained. Typical categories are lost sales diverted to the infringer, price reductions forced by the confusion, the cost of corrective advertising to undo it, and harm to the goodwill the mark carries. Each has to be proved with records and usually with expert testimony tying the loss to the infringement rather than to the market.

Section 1117(a) then allows the court, according to the circumstances of the case, to enter judgment for any sum above the amount found as actual damages, not exceeding three times that amount. The statute says this sum is compensation and not a penalty, which is why courts use it where actual damages are hard to measure precisely rather than as punishment. Profits and damages may be awarded together, but courts will not allow a double recovery for the same lost sale counted once as the owner's damage and once as the infringer's profit.

Counterfeits: mandatory trebling and statutory damages

Counterfeiting, meaning the intentional use of a mark that is identical to or substantially indistinguishable from a registered mark on the same goods or services, is treated more harshly. Under § 1117(b), absent extenuating circumstances, the court shall enter judgment for three times the profits or damages, whichever is greater, together with a reasonable attorney's fee. The word shall matters: trebling and fees are the rule, not the exception.

Because counterfeiters rarely keep honest books, § 1117(c) lets the owner elect statutory damages instead of proving profits or damages. The range is not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, and for willful counterfeiting up to $2,000,000 per counterfeit mark per type of goods or services. These provisions apply to counterfeits of registered marks, not to the ordinary confusingly-similar-name dispute between two legitimate businesses.

Destruction of infringing materials

Section 36 of the Act, 15 U.S.C. § 1118, lets the court order that all labels, signs, prints, packages, wrappers, receptacles and advertisements in the defendant's possession bearing the registered mark, or the word, term, name, symbol or device at issue in a section 43(a) case, be delivered up and destroyed, along with the plates, molds and other means of making them. For a willful dilution claim under section 43(c) the same relief is available. In practice destruction orders cover inventory, packaging and marketing stock, and they are often negotiated into a consent judgment rather than carried out by a marshal.

Attorney's fees in exceptional cases

The Lanham Act does not shift fees automatically. Section 1117(a) allows the court to award reasonable attorney fees to the prevailing party in exceptional cases, and either side can be the prevailing party. In Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014) the Supreme Court read the identical phrase in the Patent Act to mean a case that stands out from others with respect to the substantive strength of a party's litigating position or the unreasonable manner in which it was litigated, judged on the totality of the circumstances. Federal courts have applied that reading to the Lanham Act's wording. The fee question, in trademark and trade secret cases alike, is treated in depth in fee awards in trade secret and trademark cases.

The Texas Trademark Act remedies

An owner holding a Texas registration under chapter 16 of the Business and Commerce Code has a state claim with its own remedies in section 16.104. If the court finds infringement, it shall enjoin the conduct, and it may order the violator to pay the registrant's profits or damages and order counterfeits or imitations destroyed. Where the violator acted with knowledge of the registrant's mark, in bad faith or as the circumstances otherwise warrant, the court may enter judgment for up to three times profits and damages and award reasonable attorney's fees to the prevailing party.

The state provision is therefore similar in shape to the federal one, with one difference that matters: the Texas fee award turns on the defendant's knowledge or bad faith, not on the exceptional-case standard. An owner with both a federal and a Texas registration usually pleads both. An owner with neither still has the federal section 43(a) claim and Texas common law, with the same core remedies, as explained in suing for trademark infringement without a registration.

What decides how much you actually recover

The statute lists what is available. The evidence decides what is awarded. Owners who recover meaningful sums have usually done four things: documented their own sales trend before and after the infringement began, obtained the infringer's sales records in discovery, kept a log of actual confusion, and resisted the temptation to wait, since delay both rebuts irreparable harm and reduces the equities for a profits award.

Example

Suppose a Fort Worth coffee roaster has sold under an arbitrary name since 2016 and holds a federal registration. In 2025 an online seller begins using nearly the same name on bagged coffee. The roaster sues in the Northern District of Texas, shows likelihood of success and, with the statutory presumption of irreparable harm, obtains a preliminary injunction within weeks. In discovery the seller's records show $400,000 in sales under the name. The seller documents $310,000 in costs and the court awards the $90,000 difference as profits, declining to adjust it because the seller stopped promptly when sued. The roaster's claim for its own lost sales fails for want of proof that its dip was caused by the seller rather than by a new competitor across the street. No fees are awarded: the seller's defense was weak but not unreasonable. The roaster's real win is the order and the transfer of the seller's domain, negotiated into the final judgment.

Involve a litigator before the demand letter, because the remedies you can credibly threaten shape the letter, and because the records that prove profits and damages have to be preserved from the first day. Tina Wysk represents Dallas businesses asserting and defending trademark claims in federal and state court; the practice is described at intellectual property disputes.