Trademark Preliminary Injunction Checklist: A Practical Checklist

A trademark preliminary injunction has an odd rhythm: a few days of frantic work, a hearing that may decide the whole dispute, and months afterward of living with the order. The mistakes that cost the most tend to be small ones made early, such as a forwarded email nobody acted on, a bond nobody asked for, or a good fact filed under the wrong heading.

How to use this checklist

Print it and keep it in the file. Phases 1 through 5 are for the movant, the party seeking the injunction. Phases 6 and 7 are for the opponent. Phases 0 and 8 through 11 are for both. Each item names the authority behind it. Note: lines add a practical point, and red flags mark the errors that have actually sunk motions in reported cases.

For the doctrine, read Trademark Preliminary Injunctions After the Trademark Modernization Act: The Presumption of Irreparable Harm and the Delay Trap. For the step-by-step narrative with examples, read Winning or Opposing a Trademark Preliminary Injunction: A Practical Guide. For fillable papers, use Trademark Injunction Toolkit: Evidence Declarations, Proposed Orders, and Delay Chronologies.

Local rules and individual judges' standing orders control many of the mechanics. Check them first, because this list can't.

Phase 0: Triage (both sides, first day)

• Identify your circuit's preliminary injunction test and its treatment of the presumption. All federal courts start with Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008), and Starbucks Corp. v. McKinney, 602 U.S. 339 (2024) holds that the four factors govern absent a clear command from Congress. Note: Some circuits still allow a "serious questions" route, including Citigroup Global Markets, Inc. v. VCG Special Opportunities Master Fund Ltd., 598 F.3d 30 (2d Cir. 2010) and Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127 (9th Cir. 2011). Others do not, such as Real Truth About Obama, Inc. v. FEC, 575 F.3d 342 (4th Cir. 2009), vacated on other grounds, 559 U.S. 1089 (2010), reinstated in relevant part, 607 F.3d 355 (4th Cir. 2010).
• Confirm which claims qualify for the statutory presumption. 15 U.S.C. § 1116(a) reaches rights of a registrant and violations of 15 U.S.C. § 1125(a), (c), or (d). State-law claims and other federal claims don't get it. Note: AK Futures LLC v. Boyd Street Distro, LLC, 35 F.4th 682 (9th Cir. 2022) applied it to the trademark claim only, alongside a copyright claim. InSinkErator, LLC v. Joneca Co., No. 25-286 (9th Cir. Dec. 29, 2025) confirms that it reaches Lanham Act false advertising.
• Read the local rules on emergency motions, TRO procedures, and page limits. Add the assigned judge's standing orders and recent rulings.
• Issue a written litigation hold. Include chat tools, marketing agencies, and marketplace seller accounts. Fed. R. Civ. P. 37(e) addresses lost electronic information.
• Designate one person to own the calendar and the chronology. The owner should be someone who will remain available through the hearing.

Red flag: Assuming the presumption settles irreparable harm. Under Nichino America, Inc. v. Valent U.S.A. LLC, 44 F.4th 180 (3d Cir. 2022), a slight evidentiary showing makes it disappear.

Phase 1: Movant, stop the clock from hurting you

• Write down the first date anyone at the company knew of the use. Interview sales, customer service, social media, and the watch-service contact. Delay of 10 weeks from direct notice and nine months from press notice was enough in Citibank, N.A. v. Citytrust, 756 F.2d 273 (2d Cir. 1985). Note: Include what predecessors and parents knew. Moon Dot, Inc. v. Q Shack Corp., No. 3:25-cv-00396 (W.D.N.C. Aug. 21, 2025) refused to restart the clock on a transfer of rights.
• Search for public signals you should have seen. Include USPTO filings, trade press, and the defendant's site and social accounts. Moon Dot relied on a visible "Merchandise" menu and Facebook photos.
• Record every step taken since first knowledge, with dates and documents. Benisek v. Lamone, 585 U.S. 155 (2018) requires reasonable diligence.
• Set an internal filing target in weeks. A movant whose only excuse is "we were getting to it" will likely lose this point. See Wreal, LLC v. Amazon.com, Inc., 840 F.3d 1244 (11th Cir. 2016) (five months after filing suit, unexplained), UATP IP, LLC v. Kangaroo, LLC, No. 22-2047 (Fed. Cir. Feb. 16, 2024) (error not to address a ten-month gap after the complaint; nonprecedential), and Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964 (2d Cir. 1995) (over a year in total).
• If you investigate, keep a log of the investigation. Gilead Sciences, Inc. v. Santulli, No. 25-1850 (4th Cir. Aug. 13, 2026, amended Aug. 18, 2026) excused ten months because the plaintiff was investigating and reported to the FDA, and Tough Traveler preserves that good faith excuse.
• Decide whether to send a letter, and what it won't say. See Trademark Cease-and-Desist Letters: Sending and Responding: A Practical Guide. Note: A serious threat can create declaratory judgment jurisdiction under MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007).
• Keep money out of the early correspondence. Total90, LLC v. Nike, Inc., No. 2:25-cv-02325 (E.D. La. June 22, 2026) held that numerous communications seeking payment undermined the claim of irreparable harm.
• If you negotiate, get a written standstill with a tolling clause and a fixed end date. Fed. R. Evid. 408 limits some uses of settlement talks, but courts look at the timeline regardless. Note: Moon Dot (footnote 6) gave little credit for months of talks.

Red flag: A complaint filed fast, then silence. In Wreal the Eleventh Circuit described a plaintiff moving with the urgency of someone on a "meandering evening stroll." Filing doesn't stop the clock. The motion does.

Red flag: An internal "not worth it yet" email from the first month. Find it now, and be ready to explain it in your opening papers.

Phase 2: Movant, the merits record

• Confirm ownership and validity. Pull the current USPTO status, title chain, and any assignment. Registration is prima facie evidence under 15 U.S.C. § 1057(b) and § 1115, but Ultra Marine Europe, s.r.o. v. Ultra Marine West, Inc., No. 1:26-cv-21899 (S.D. Fla. Sept. 21, 2026) reminds us that it's a thumb on the scale and "not an anvil."
• For an unregistered mark, assemble distinctiveness proof as of the defendant's first use. See 15 U.S.C. § 1125(a) and Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide.
• Audit the registration for vulnerabilities. Look for nonuse, wrong owner, and specimen problems; a cancellation counterclaim under 15 U.S.C. § 1119 can arrive with the opposition.
• Make a test purchase with a witness who can testify. A single sale to an investigator supported jurisdiction in NBA Properties, Inc. v. HANWJH, 46 F.4th 614 (7th Cir. 2022), though you should check your circuit.
• Preserve web evidence with system-level detail. Capture URL, time, listing ID, page source, metadata, and a file hash. A witness must authenticate under Fed. R. Evid. 901.
• Chart every factor in the local test. Use AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), or your circuit's list, and see Trademark Likelihood-of-Confusion Analysis: A Practical Checklist. Note: Don't assume a shortcut. Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) vacated an injunction that leaned on the "Internet trinity."
• Identify whether your facts compress the analysis. Consider counterfeits (AK Futures), holdover licensees (S & R Corp. v. Jiffy Lube International, Inc., 968 F.2d 371 (3d Cir. 1992)), and materially different gray goods (Gilead).
• Anticipate a parody or expressive-use defense. Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023) and Vans, Inc. v. MSCHF Product Studio, Inc., 88 F.4th 125 (2d Cir. 2023) apply ordinary confusion analysis when the mark is used as a source identifier.
• Log actual confusion with dates and sources. Customer statements usually aren't barred as hearsay when offered to show the speaker's confusion. Fun-Damental Too, Ltd. v. Gemmy Industries Corp., 111 F.3d 993 (2d Cir. 1997); Fed. R. Evid. 803(3).
• Remember who has which burden. Burdens at this stage track trial under Gonzales v. O Centro Espírita Beneficente União do Vegetal, 546 U.S. 418 (2006). A fair use defendant has no burden to disprove confusion under KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).

Phase 3: Movant, the harm record (independent of the presumption)

• Prepare a harm declaration for the opening papers. After rebuttal, the plaintiff must produce evidence of harm, as Nichino holds. A reply brief may be too late.
• Separate confusion evidence from harm evidence. Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239 (9th Cir. 2013) held that an email showing a customer's confusion didn't show irreparable harm.
• Identify the concrete loss of control. Examples include a quality or safety gap, complaints blaming your brand, and dealer or retailer reactions. Note: Gilead credited harm to goodwill among patients and healthcare providers. Test the defendant's goods if you can.
• Offer evidence a judge could rely on even without the presumption. InSinkErator found an error about the presumption harmless because lost shelf space and contract bidding showed likely harm anyway.
• Explain why money won't fix it. The opinion in Herb Reed asks whether legal remedies are inadequate in this case, not in trademark cases generally.
• Screen your own files for statements that money would be enough. Look for license offers, sale discussions, and damages estimates. Total90 shows the risk.
• Screen for uneven enforcement. Prepare to explain any similar uses you tolerated.
• Confirm a likely repeat of the harm. Irreparable harm must be imminent. Wreal and Ultra Marine both say so.

Phase 4: Movant, vehicle and filing

• Choose among ex parte TRO, noticed TRO, seizure, and an expedited preliminary injunction. Fed. R. Civ. P. 65 governs. For a broader list, see Preliminary Injunction and TRO Application Checklist: A Practical Checklist.
• For an ex parte TRO, gather evidence of disposal history. Reno Air Racing Association, Inc. v. McCord, 452 F.3d 1126 (9th Cir. 2006) requires more than an assertion that goods may vanish. Compare In re Vuitton et Fils S.A., 606 F.2d 1 (2d Cir. 1979).
• Prepare the attorney certification. Rule 65(b)(1)(B) requires it for any order without notice.
• Calendar the 14-day limit. See Rule 65(b)(2) and Granny Goose Foods, Inc. v. Brotherhood of Teamsters, 415 U.S. 423 (1974). A TRO extended too long may be treated as an appealable injunction under Sampson v. Murray, 415 U.S. 61 (1974).
• For counterfeits, check every element of § 1116(d). Under 15 U.S.C. § 1116(d), you need reasonable notice to the US attorney, security, and specific findings. A hearing is set 10 to 15 days after the order unless good cause or consent changes that. Wrongful seizure can bring lost profits, and punitive damages if the seizure was sought in bad faith. Note: See Counterfeiting, Seizure Orders, and Schedule A Litigation: Fighting Fakes in Federal Court.
• Plead an accounting if you want an asset restraint. Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308 (1999) bars freezes in aid of legal damages. Gucci America, Inc. v. Weixing Li, 768 F.3d 122 (2d Cir. 2014) and Levi Strauss & Co. v. Sunrise International Trading Inc., 51 F.3d 982 (11th Cir. 1995) allow them to protect equitable relief. 15 U.S.C. § 1117(a) supplies the accounting.
• Name the right parties. Dewberry Group, Inc. v. Dewberry Engineers Inc., 604 U.S. 321 (2025) limits a profits award to the named defendant. Gilead extended preliminary relief to those contributing to the infringement.
• Give and document notice, especially to foreign defendants. Rule 65(a)(1) requires notice. Whirlpool Corp. v. Shenzhen Sanlida Electrical Technology Co., 80 F.4th 536 (5th Cir. 2023) held that perfected service wasn't required.
• Line up a surety before filing. Bonding can take days for a smaller company.
• Attach a proposed order and proposed findings. Fed. R. Civ. P. 52(a)(2) requires findings and conclusions.

Red flag: Telling the court the defendant might leave town with the goods, with nothing more. Reno Air rejected that kind of showing and vacated the contempt sanctions that followed.

Phase 5: Movant, the survey decision

• Decide in the first week. A survey takes weeks, and those weeks are on your clock. Weight Watchers International, Inc. v. Luigino's, Inc., 423 F.3d 137 (2d Cir. 2005) looked closely at the time spent before and after testing.
• Match the design to the mark. Use Trademark Consumer Survey Design: A Practical Checklist for universe, stimulus, control, and format.
• Consider a pilot through a consulting expert. Fed. R. Civ. P. 26(b)(4) protects a nontestifying expert in most circumstances.
• Check the study against Rule 702. See Fed. R. Evid. 702, as amended in 2023, and Daubert Challenges to Consumer Survey Experts in Trademark Litigation: A Practical Guide. Note: In the Ninth Circuit, technical flaws usually go to weight, under Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc., 618 F.3d 1025 (9th Cir. 2010). Don't assume this everywhere.
• Have a no-survey plan. Counterfeits and identical marks often don't need one. File on schedule and seek leave to supplement if the study runs late.

Phase 6: Opponent, first days

• Read any TRO and comply at once. To challenge an ex parte order, move to dissolve under Rule 65(b)(4), on two days' notice or shorter.
• Calendar the hearing, opposition date, and answer date.
• Preserve first, then change. Capture listings before altering them.
• Notify insurers. Check advertising injury coverage and notice terms.
• Gather knowledge evidence. Include emails from the plaintiff, trade show contact, prior letters, press, and the plaintiff's watch notices if discoverable. Ultra Marine turned on an invoice and a site visit.
• Interview the person who chose the name. Collect the clearance file. See The Shield of Good Faith: How Trademark Clearance Searches, Attorney Opinions, and USPTO Approval Protect Against Willful Infringement Claims before you rely on counsel's opinion.
• Quantify the cost of an injunction with documents. Include inventory, printing, contracts, and marketing.
• Seek limited expedited discovery. Fed. R. Civ. P. 26(d)(1) requires a court order or agreement. Ask for the plaintiff's first-knowledge documents and harm evidence.
• Consider a stipulated standstill or narrow consent order. It can save your budget for the merits.

Phase 7: Opponent, the opposition

• Attack likelihood of success first. With no such finding, the presumption is never triggered, as Total90 and Nichino both state.
• Label the rebuttal section clearly, under irreparable harm. AK Futures treated a cessation argument as waived because it was made on another issue.
• Use affirmative evidence. Nichino holds that pointing to a lack of actual confusion evidence does not meet the production burden.
• Argue that the burden is one of production only. See Fed. R. Evid. 301 and Nichino. Note: Check whether your circuit has adopted that framework. Whirlpool cites it, but many courts simply apply the statute.
• Argue delay under its own heading, and don't rest on prejudice. Prejudice belongs to laches, under footnote 19 in Gilead. A shorter delay may defeat urgency without satisfying laches, according to Citibank.
• Consider curing what you can before the hearing. In Diamonds Painting, Inc. v. CC Brand Holdings, LLC, No. 26-cv-3900 (E.D.N.Y. July 21, 2026), delay plus substantial remedial changes rebutted the presumption, and the court refused to apply the mootness standard for voluntary cessation.
• Develop any other rebuttal facts. Buyer sophistication (Nichino), proven coexistence, and real cessation are the main candidates. Note: Whirlpool rejected coexistence and delay arguments first raised on appeal without factual support. Put them in the record now.
• If the court is using a "serious questions" test, argue the presumption is not triggered. The statute says "likelihood of success." This is an open point, and you should present it as such.
• Dissect the plaintiff's harm declarations. Herb Reed rejects platitudes.
• Argue the equities with numbers. Nichino credited millions in lost sales while the defendant sought a new trademark. But Whirlpool called purely financial harms "presumptively reparable," so also explain non-monetary harm, such as loss of accounts.
• Address public interest specifically. Gilead rejected a low-price argument because it assumed the goods were genuine.
• If you use a disclaimer, prove it works. Under Weight Watchers, the party offering it bears the burden.
• Consider a counterclaim. Think about cancellation under 15 U.S.C. § 1119 and fair use, as discussed in Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide.

Red flag: "The plaintiff waited too long," with no dates or exhibits. Evidence wins this argument, and a table of dates helps the court adopt it.

Phase 8: Bond (both sides)

• Opponent: request security in writing, with a number and a sworn basis. Vans found no error in omitting a bond where none was requested.
• Movant: propose an amount and a rationale, whether nominal or not. Compare Hoechst Diafoil Co. v. Nan Ya Plastics Corp., 174 F.3d 411 (4th Cir. 1999) with Jorgensen v. Cassiday, 320 F.3d 906 (9th Cir. 2003) and Doctor's Associates, Inc. v. Stuart, 85 F.3d 975 (2d Cir. 1996).
• Both: estimate on the likely length of the injunction. Include lost profits, scrapped inventory, rebrand cost, and contract losses.
• Both: remember the cap. Recovery usually can't exceed the bond. Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883 (7th Cir. 2000) (amended on denial of rehearing, 209 F.3d 1032) says courts should err on the high side.
• Movant: brief your finance team on the exposure. Nintendo of America, Inc. v. Lewis Galoob Toys, Inc., 16 F.3d 1032 (9th Cir. 1994) adopted a rebuttable presumption in favor of execution and affirmed a $15 million award.
• Ask whether the order is effective on signing or posting. Serve and post accordingly. Fed. R. Civ. P. 65.1 governs proceedings against a surety.

Phase 9: The order (both sides)

• State the reasons, terms, and acts in the order itself. Rule 65(d)(1) forbids describing the acts by reference to the complaint or another document.
• List the marks, variants, goods, and known identifiers. Include listing IDs, domains, handles, and app names. Add metadata and redirects where appropriate.
• Tie the reach to US commerce. Under Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023), infringing use in commerce must be domestic, and on remand Hetronic International, Inc. v. Hetronic Germany GmbH, 99 F.4th 1150 (10th Cir. 2024) held a permanent injunction can't go beyond the qualifying domestic conduct. See 15 U.S.C. § 1127 for "use in commerce."
• Track the persons bound. Rule 65(d)(2) covers parties, their agents and others in active concert with actual notice. Trump v. CASA, Inc., 606 U.S. 831 (2025) confirms that equity's default is relief between the parties.
• Flag any mandatory terms. Recalls and removals may face a heavier burden, under Trial Lawyers College v. Gerry Spence's Trial Lawyers College, 23 F.4th 1262 (10th Cir. 2022).
• Match geography to likely confusion. See Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959) and, in the post-trial setting, Guthrie Healthcare System v. ContextMedia, Inc., 826 F.3d 27 (2d Cir. 2016).
• Ask for the sworn compliance report. § 1116(a) authorizes it within 30 days, or as otherwise set.
• Consider escrow or sell-off terms. Vans affirmed an escrow of gross revenue from completed sales, while reserving judgment on consumer refunds.
• Opponent: submit an alternative order without waiving your objections. Include a sell-off, a house-mark option, or similar. SoClean, Inc. v. Sunset Healthcare Solutions, Inc., 52 F.4th 1363 (Fed. Cir. 2022) noted the narrowness of the order it affirmed.
• Include specific proposed findings on each factor, and on the presumption both ways. Rule 52(a)(2) requires them, and Gilead shows the value of alternative grounds.

Phase 10: The hearing

• Ask the court whether it will hear witnesses. Fed. R. Civ. P. 43(c) allows decisions on affidavits or oral testimony. Identify any facts you consider materially disputed.
• Remember that the evidence carries forward. Admissible hearing evidence becomes part of the trial record under Rule 65(a)(2).
• Prepare to address hearsay. The court may consider it, under Levi Strauss and Flynt Distributing Co. v. Harvey, 734 F.2d 1389 (9th Cir. 1984). Its weight is another matter.
• Prepare the timeline witness for cross-examination. Three questions: when did you learn, what did you do next, and what can't money fix?
• Bring physical samples and marketplace views. Display them as buyers see them, including on a phone.
• Have bond evidence in the room. Mead Johnson indicates a judge should tell parties that bond will be addressed, but don't count on the reminder.
• Be ready for a consolidation proposal. Rule 65(a)(2) allows the court to advance the trial.

Phase 11: After the ruling

• Winner: serve the order at once on everyone to be bound, and keep proof of service. Post the bond first if the order requires it.
• Winner: monitor, then enforce. See Contempt and Enforcing Injunctions: Civil, Criminal, and What an Order Actually Compels and Contempt and Enforcement Checklist: A Practical Checklist. Bring a redesign to the court promptly by a motion to modify, as in Weight Watchers.
• Enjoined party: comply immediately. Fed. R. Civ. P. 62(c) means an appeal doesn't stay the order.
• Enjoined party: move for a stay in the district court first. Use Rule 62(d), Fed. R. App. P. 8, and Nken v. Holder, 556 U.S. 418 (2009).
• Either party: calendar the notice of appeal. Jurisdiction lies under 28 U.S.C. § 1292(a)(1), and 30 days is the general deadline in Fed. R. App. P. 4(a)(1)(A). Ask to expedite. Note: TROs usually aren't appealable, but see Carson v. American Brands, Inc., 450 U.S. 79 (1981) on orders with a similar effect.
• Before appealing, check preservation. AK Futures, Whirlpool, and Vans each refused or discounted arguments not raised below.
• Remember that findings aren't binding at trial. University of Texas v. Camenisch, 451 U.S. 390 (1981) so holds. Plan the merits case accordingly.
• If you were wrongly enjoined and later win, move on the bond. Galoob explains the presumption of recovery.
• Don't budget a preliminary win as a fee award. Lackey v. Stinnie, 604 U.S. 192 (2025) is a § 1988 case, but its reasoning about temporary relief is likely to be cited. See Lanham Act Attorney's Fees Under 15 U.S.C. § 1117(a): A Practical Guide.
• Use the ruling as a settlement moment. Consider Negotiating a Trademark Coexistence Agreement: A Practical Guide or a consent judgment.

Deadlines and time limits

Local rules can shorten or add to these, and opposition deadlines are often set by order.

This checklist is general information for orientation and doesn't replace advice about a specific dispute.

Related Documents

Related Articles

• Trademark Preliminary Injunctions After the Trademark Modernization Act: The Presumption of Irreparable Harm and the Delay Trap: the doctrine and the delay case table.
• Preliminary Injunctions and Temporary Restraining Orders: Emergency Relief in Federal Court: the general federal framework.
• Counterfeiting, Seizure Orders, and Schedule A Litigation: Fighting Fakes in Federal Court: counterfeit and seizure procedure.
• False Endorsement Under the Lanham Act: Celebrities, Models, Sound-Alikes, and the Right of Publicity's Federal Cousin: another § 1125(a) claim that may need urgent relief.

Related Guides

• Winning or Opposing a Trademark Preliminary Injunction: A Practical Guide: the sequence explained, with worked examples.
• Taking Down a Lookalike Domain in Days: A Practical Guide: faster routes when the problem is a domain name.

Related Checklists

• Preliminary Injunction and TRO Application Checklist: A Practical Checklist: the non-trademark basics.
• Trademark Likelihood-of-Confusion Analysis: A Practical Checklist: the merits factors in detail.
• Online Marketplace Trademark Enforcement Checklist: A Practical Checklist: parallel platform steps.

Related Toolkits

• Trademark Injunction Toolkit: Evidence Declarations, Proposed Orders, and Delay Chronologies: templates for most of the tasks above.
• Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands: test purchase records and platform notices.