Trademark Cease and Desist - Hosting/Infrastructure Provider (Texas)

TRADEMARK CEASE AND DESIST NOTICE TO HOSTING/INFRASTRUCTURE PROVIDER

NOTICE UNDER FEDERAL AND TEXAS STATE LAW

SENT VIA: ☐ Certified Mail, Return Receipt Requested ☐ Email to Abuse/Legal Department ☐ Online Abuse Reporting Portal ☐ Personal Service (Tex. R. Civ. P. 106)

RE: NOTICE OF TRADEMARK INFRINGEMENT -- Federal and Texas State Law Violations -- Demand for Immediate Takedown of Infringing Content Hosted at [________________________________]

Dear Abuse/Legal Team of [________________________________] ("Provider"):

This firm represents [________________________________] ("Trademark Owner" or "Our Client") in connection with the protection and enforcement of its valuable trademark rights under both federal law and the laws of the State of Texas. We write to notify you that your hosting infrastructure is being used to facilitate trademark infringement that directly harms Our Client's business and Texas consumers, and to demand that you take immediate action.

Texas provides exceptionally strong consumer protection through the Deceptive Trade Practices-Consumer Protection Act ("DTPA"), Tex. Bus. & Com. Code § 17.41 et seq. The DTPA authorizes treble damages for knowing violations and mandatory attorney's fees to prevailing consumers -- remedies that substantially exceed those available under federal trademark law alone. Additionally, Texas is the second-largest state by both population and economy, making it a significant market for trademark enforcement.

This notice constitutes actual knowledge of specific trademark infringement. Continued hosting after receipt may expose your company to contributory trademark infringement liability under both federal and Texas state law.

PART I: LEGAL FRAMEWORK -- FEDERAL AND TEXAS STATE LAW

A. Federal Trademark Law (Lanham Act)

1. Registered Mark Infringement -- 15 U.S.C. § 1114(1)

Any person who uses in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of goods or services likely to cause confusion, mistake, or deception shall be liable.

2. False Designation of Origin -- 15 U.S.C. § 1125(a)

Any person who uses in commerce any false designation of origin or misleading representation likely to cause confusion as to the affiliation, connection, or association of goods or services with another shall be liable.

3. Dilution -- 15 U.S.C. § 1125(c)

The owner of a famous mark is entitled to injunctive relief against dilution by blurring or tarnishment, regardless of confusion, competition, or actual economic injury.

B. Contributory Trademark Infringement -- Fifth Circuit Standards

Under Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), a party is contributorily liable if it (1) intentionally induces infringement, or (2) continues to supply services to one it knows or has reason to know is infringing.

The Fifth Circuit, which governs Texas, has addressed contributory trademark infringement in several significant cases:

1. Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996) (widely followed in the Fifth Circuit for its analysis of landlord/provider liability for trademark infringement by tenants/customers)

2. Mary Kay Inc. v. Weber, 601 F. Supp. 2d 839 (N.D. Tex. 2009) -- A Northern District of Texas case analyzing contributory trademark infringement in the online context, applying the Inwood standard to Internet intermediaries.

3. Willful Blindness in the Fifth Circuit

The Fifth Circuit recognizes that willful blindness to trademark infringement is equivalent to actual knowledge. A hosting provider that has reason to suspect infringement but deliberately avoids investigation engages in willful blindness. See Re/Max Int'l, Inc. v. Quiet Commerce, Inc., 2007 WL 1453772 (N.D. Tex. 2007).

NOTICE: This letter provides your company with specific, actual knowledge of identified trademark infringement hosted on your infrastructure. Under the Fifth Circuit's application of the Inwood standard, failure to investigate and act will establish contributory liability and may constitute willful blindness.

C. Texas Trademark Act -- Tex. Bus. & Com. Code Ch. 16

The Texas Trademark Act provides comprehensive state-level trademark protection:

1. Registration (§ 16.011-.031)

Texas maintains a state trademark registration system through the Secretary of State. Registration provides constructive notice of the registrant's claim of ownership throughout Texas and is prima facie evidence of the validity of registration, the registrant's ownership, and the registrant's exclusive right to use the mark in Texas.

2. Infringement (§ 16.051)

A registrant may proceed by suit to enjoin the manufacture, use, display, or sale of any counterfeits or imitations of the registrant's mark and may prove any damages associated with the infringement.

3. Common Law and Federal Rights Preserved (§ 16.061)

Nothing in the Texas Trademark Act adversely affects the rights or the enforcement of rights in marks acquired in good faith at common law. Texas recognizes both registered and common law trademark rights.

4. Dilution (§ 16.054)

A person may bring an action to enjoin an act likely to injure a business reputation or to dilute the distinctive quality of a mark registered under the Texas Trademark Act or a mark or trade name valid at common law, regardless of whether there is competition between the parties or a likelihood of confusion.

5. Counterfeit Marks (§ 16.081-.103)

Texas has specific criminal and civil provisions targeting counterfeit marks, including civil remedies for trademark counterfeiting (§ 16.102-16.103) that include:

• Injunctive relief
• Actual damages or $1,000, whichever is greater
• Profits derived from the counterfeit
• Attorney's fees and costs
• Treble damages for willful violations
• Destruction of counterfeit items

D. Texas Deceptive Trade Practices-Consumer Protection Act (DTPA) -- Tex. Bus. & Com. Code Ch. 17

The Texas DTPA is one of the most potent consumer protection statutes in the United States and provides exceptionally powerful remedies for trademark-related misconduct:

1. Legislative Intent (§ 17.44)

The DTPA is intended to "protect consumers against false, misleading, and deceptive business practices, unconscionable actions, and breaches of warranty."

2. Deceptive Trade Practices (§ 17.46)

Section 17.46(b) lists specific false, misleading, or deceptive acts or practices that are unlawful, including:

• § 17.46(b)(2): Causing confusion or misunderstanding as to the source, sponsorship, approval, or certification of goods or services
• § 17.46(b)(3): Causing confusion or misunderstanding as to affiliation, connection, or association with another
• § 17.46(b)(4): Using deceptive representations or designations of geographic origin
• § 17.46(b)(5): Representing that goods or services have sponsorship, approval, characteristics, ingredients, uses, benefits, or quantities that they do not have
• § 17.46(b)(7): Representing that goods or services are of a particular standard, quality, or grade, when they are not
• § 17.46(b)(9): Advertising goods or services with intent not to sell them as advertised
• § 17.46(b)(12): Representing that an agreement confers or involves rights, remedies, or obligations which it does not have or involve

3. Consumer Status (§ 17.45(4))

A "consumer" is defined as an individual, partnership, corporation, or governmental entity who seeks or acquires by purchase or lease, goods or services. Trademark owners who purchase goods or services (including online services) impacted by infringing activity may qualify as "consumers" under the DTPA.

4. Remedies (§ 17.50)

The DTPA provides the following remedies:

• Economic Damages: Actual damages sustained as a result of the deceptive practice
• Mental Anguish Damages: In cases of knowing violations (§ 17.50(b)(1))
• Treble Damages: Up to three times economic damages for knowing or intentional violations (§ 17.50(b)(1))
• Attorney's Fees: Mandatory reasonable and necessary attorney's fees to the prevailing consumer (§ 17.50(d))
• Court Costs: Mandatory (§ 17.50(d))
• Injunctive Relief: As appropriate

5. Mandatory Pre-Suit Notice (§ 17.505)

IMPORTANT: The DTPA requires a written demand letter at least 60 days before filing suit. This demand must advise the defendant of the specific complaint, the amount of economic damages, the amount of damages for mental anguish, and the attorney's fees incurred. Failure to send this mandatory pre-suit notice can waive certain DTPA remedies.

PRACTICE NOTE: This cease-and-desist notice can serve double duty as both the trademark takedown demand and the DTPA § 17.505 pre-suit notice if properly structured. Ensure the demand clearly states the specific complaint, damages, and fees.

E. CDA § 230 and DMCA -- Inapplicable to Trademark

• CDA § 230(e)(2) expressly exempts intellectual property claims from § 230 immunity
• DMCA § 512 safe harbor applies only to copyright, not trademark
• The Fifth Circuit recognizes these distinctions

PART II: TRADEMARK OWNERSHIP AND REGISTRATION DETAILS

Federal Registration(s)

Texas State Registration (if applicable)

Additional Mark(s)

Goodwill and Market Presence in Texas

• ☐ Our Client has operated in Texas since [__/__/____]
• ☐ Our Client maintains ☐ physical locations ☐ online sales ☐ advertising directed at Texas consumers
• ☐ Our Client is headquartered in Texas
• ☐ The mark has been in continuous use for [____] years
• ☐ Texas-specific advertising expenditures: approximately $[________________________________]
• ☐ Texas-based revenue: approximately $[________________________________]
• ☐ Texas represents a significant portion of Our Client's market
• ☐ The mark is widely recognized by Texas consumers

See Exhibit B (Trademark Registration Certificate(s)).

PART III: IDENTIFICATION OF INFRINGING CONTENT

A. Infringing Resource

B. Nature of Infringing Activity

• ☐ Use of mark in domain name
• ☐ Use of mark in website content, headers, or meta tags
• ☐ Sale of counterfeit goods bearing Our Client's mark
• ☐ Sale of competing goods/services under confusingly similar mark
• ☐ False impression of affiliation, sponsorship, or endorsement
• ☐ Phishing or fraud scheme targeting Our Client's Texas customers
• ☐ Use of Our Client's logo, trade dress, or proprietary branding
• ☐ Cybersquatting or typosquatting
• ☐ Dilution of Our Client's mark (§ 16.054)
• ☐ DTPA violation -- deceptive trade practice directed at Texas consumers
• ☐ Sale of counterfeit marked goods in Texas (§ 16.081)
• ☐ Other: [________________________________]

C. Texas-Specific Impact

• ☐ The infringing website targets Texas consumers
• ☐ Products or services are sold to or delivered in Texas
• ☐ Texas consumers have been deceived or confused
• ☐ The infringer references Texas locations, markets, or services
• ☐ Complaints from Texas consumers have been received
• ☐ The infringing activity affects Our Client's Texas business
• ☐ The hosting provider operates data centers in Texas (Austin, Dallas, Houston, San Antonio are major data center hubs)
• ☐ The infringing activity involves sale of counterfeit goods in or destined for Texas
• ☐ Texas consumers aged 65+ may be affected (DTPA enhanced protection)
• ☐ Other Texas nexus: [________________________________]

D. Likelihood of Confusion -- Fifth Circuit "Digits of Confusion"

The Fifth Circuit applies a multi-factor test for likelihood of confusion, sometimes called the "digits of confusion," from Falcon Rice Mill, Inc. v. Community Rice Mill, Inc., 725 F.2d 336 (5th Cir. 1984) and refined in Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998):

1. Type/strength of the mark: ☐ Famous ☐ Strong ☐ Distinctive ☐ Suggestive ☐ Descriptive (with secondary meaning)
2. Similarity of the marks: ☐ Identical ☐ Substantially similar ☐ Confusingly similar
3. Similarity of the products/services: ☐ Identical ☐ Closely related ☐ Overlapping
4. Identity of retail outlets and purchasers: ☐ Same channels ☐ Overlapping ☐ Internet (both)
5. Identity of advertising media used: ☐ Same media ☐ Overlapping ☐ Online (both)
6. Defendant's intent: ☐ Intentional ☐ Willful ☐ Bad faith ☐ Unknown
7. Actual confusion: ☐ Documented ☐ Likely ☐ Not yet documented
8. Degree of care exercised by potential purchasers: ☐ Low ☐ Moderate ☐ High

E. Evidence Summary

PART IV: HOSTING PROVIDER'S LEGAL EXPOSURE

A. Contributory Liability After Notice

Upon receipt, your company has specific, actual knowledge:

1. You know of specific infringing activity at an identified URL
2. You have the technical ability to disable access
3. You continue to supply hosting services
4. Failure to act may establish contributory liability under Fifth Circuit standards

B. Financial Exposure Summary

C. DTPA Treble Damages and Attorney's Fees -- Critical Risk

The DTPA provides mandatory attorney's fees and allows treble damages for knowing or intentional violations. Unlike federal trademark law, where attorney's fees require showing an "exceptional" case, the DTPA makes fees automatic for prevailing consumers. Additionally, the treble damages provision (up to 3x economic damages) creates enormous financial exposure for knowing violations -- and a hosting provider that continues to host infringing content after receiving specific notice is engaging in a knowing practice.

D. Your Acceptable Use Policy

• ☐ Your AUP prohibits trademark infringement
• ☐ Your AUP prohibits unlawful activity
• ☐ Your TOS authorizes suspension/termination
• ☐ Abuse reporting mechanism: [________________________________]

PART V: DEMANDS AND REQUIRED ACTIONS

We demand the following within [____] business days:

A. Immediate Takedown

• ☐ Suspend or terminate the hosting account for [________________________________]
• ☐ Disable public access to the infringing resource
• ☐ Remove all content displaying Our Client's trademark(s)
• ☐ Prevent reactivation or migration of infringing content
• ☐ If Texas data centers are involved, ensure infringing content is purged from all Texas-based servers

B. Information Disclosure

• ☐ Account holder name and contact information
• ☐ Account creation date and registration details
• ☐ Payment and billing information
• ☐ Access and activity logs

C. Evidence Preservation

• ☐ Preserve all records related to the infringing account
• ☐ Implement litigation hold
• ☐ Do not destroy any relevant evidence

D. Written Confirmation

• ☐ Confirm all actions taken within [____] business days
• ☐ Direct responses to the undersigned

E. DTPA Pre-Suit Notice (§ 17.505)

This notice also serves as the mandatory pre-suit demand letter under DTPA § 17.505. Pursuant to this section, we advise you of the following:

• Specific Complaint: Your company's hosting infrastructure is being used to facilitate trademark infringement as described herein, constituting a deceptive trade practice under § 17.46(b)(2), (3), and/or (5).
• Economic Damages: Our Client has suffered economic damages of approximately $[________________________________] as a result of the infringing activity.
• Mental Anguish: ☐ Applicable ☐ Not applicable
• Attorney's Fees Incurred: Approximately $[________________________________] to date.

Under § 17.505(a), you have sixty (60) days from receipt of this notice to tender a written settlement offer. If no offer is made, or if the offer is rejected, Our Client may file suit and seek the full range of DTPA remedies, including treble damages.

PART VI: DMCA SAFE HARBOR -- INAPPLICABILITY

This is a trademark notice. The DMCA safe harbor (17 U.S.C. § 512) does not apply. CDA § 230(e)(2) exempts IP claims. No statutory safe harbor for trademark infringement exists.

PART VII: LITIGATION WARNING

If your company fails to act, Our Client is prepared to:

1. File a federal lawsuit in the Northern District of Texas (Dallas, Fort Worth), Southern District of Texas (Houston, Galveston), Eastern District of Texas (Tyler, Marshall), or Western District of Texas (San Antonio, Austin, Waco)
2. File a state court action in a Texas District Court under the Texas Trademark Act, DTPA, and common law
3. Seek a TRO and/or temporary injunction under Tex. R. Civ. P. 680-693 or Fed. R. Civ. P. 65
4. Pursue DTPA treble damages and mandatory attorney's fees -- the most significant financial risk to your company
5. Seek additional remedies under the Texas counterfeit marks statute (§ 16.081-.103)
6. Refer the matter to the Texas Attorney General, Consumer Protection Division, for DTPA enforcement (§ 17.47)
7. Subpoena records through Texas discovery mechanisms (Tex. R. Civ. P. 200-215)

Texas-Specific Court Considerations

Texas State Courts: Texas District Courts have general civil jurisdiction. Texas counties with commercial court divisions may provide specialized handling for complex business disputes.

The Western District of Texas (Austin division) has become increasingly prominent for technology and IP cases, reflecting Austin's growth as a major technology hub where many hosting providers operate.

Preservation of Rights

Our Client reserves all rights, including:

• ☐ Federal trademark infringement (15 U.S.C. § 1114)
• ☐ Federal unfair competition (15 U.S.C. § 1125(a))
• ☐ Federal dilution (15 U.S.C. § 1125(c))
• ☐ Texas trademark infringement (§ 16.051)
• ☐ Texas trademark dilution (§ 16.054)
• ☐ Texas counterfeit marks (§ 16.081-.103)
• ☐ DTPA violations (§ 17.46) -- treble damages and mandatory fees
• ☐ Common law trademark infringement and unfair competition
• ☐ Unjust enrichment
• ☐ Tortious interference with business relations
• ☐ Civil conspiracy

PART VIII: DOCUMENTATION AND EVIDENCE PRESERVATION CHECKLIST

Pre-Notice Preparation

• ☐ Obtained current WHOIS records
• ☐ Confirmed hosting provider via DNS/HTTP headers
• ☐ Captured timestamped screenshots
• ☐ Preserved HTML source of infringing pages
• ☐ Prepared side-by-side mark comparison
• ☐ Reviewed provider's AUP/TOS
• ☐ Gathered federal and Texas registration certificates
• ☐ Documented Texas consumer impact
• ☐ Assessed UDRP/URS applicability
• ☐ Identified Texas data centers operated by provider
• ☐ Prepared DTPA § 17.505 pre-suit demand calculations
• ☐ Confirmed "consumer" status for DTPA claim (§ 17.45(4))

Evidence Preservation

• ☐ Implemented litigation hold
• ☐ Set up automated monitoring
• ☐ Preserved chain of custody documentation
• ☐ Created certified copies of digital evidence
• ☐ Documented all provider communications
• ☐ Preserved proof of delivery (critical for DTPA § 17.505 60-day requirement)

Post-Notice Follow-Up

• ☐ Calendared DTPA 60-day pre-suit notice period expiration
• ☐ Calendared hosting provider response deadline
• ☐ Monitored infringing resource
• ☐ Documented post-notice changes
• ☐ Prepared litigation strategy for both federal and state venues
• ☐ Evaluated DTPA settlement demand (§ 17.505(c))
• ☐ Considered Texas AG referral (Consumer Protection Division)
• ☐ Assessed whether provider has Texas data centers (supporting jurisdiction)

PART IX: TEXAS-SPECIFIC PRACTICE NOTES

A. Fifth Circuit "Digits of Confusion" -- Detailed Application

The Fifth Circuit uses a multi-factor likelihood of confusion test derived from Falcon Rice Mill, Inc. v. Community Rice Mill, Inc., 725 F.2d 336 (5th Cir. 1984), and elaborated in Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998):

The eight factors (or "digits") are:

1. Strength of the plaintiff's mark -- both conceptual and commercial strength
2. Similarity of design between the marks -- appearance, sound, and meaning
3. Similarity of the products/services -- degree of competition or overlap
4. Identity of retail outlets and purchasers -- shared distribution channels
5. Identity of advertising media -- common advertising platforms
6. Defendant's intent -- whether the junior user intended to benefit from the senior mark's goodwill
7. Actual confusion -- evidence that consumers were actually confused
8. Degree of care exercised by potential purchasers -- less careful consumers are more easily confused

The Fifth Circuit has recognized that Internet commerce expands the analysis, particularly regarding "identity of retail outlets" and "identity of advertising media" where both parties operate online. See Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008).

B. DTPA -- Strategic Powerhouse for Texas Trademark Enforcement

The Texas DTPA is arguably the strongest consumer protection statute in the country for trademark-related enforcement. Key strategic considerations:

1. Treble Damages (§ 17.50(b)(1))

For "knowing" violations, the DTPA allows recovery of three times economic damages. A hosting provider that continues to facilitate trademark infringement after receiving specific notice is arguably engaged in a "knowing" deceptive practice, triggering treble damages exposure.

2. Mandatory Attorney's Fees (§ 17.50(d))

Unlike federal trademark law, which limits attorney's fees to "exceptional" cases (15 U.S.C. § 1117(a)), the DTPA provides mandatory reasonable and necessary attorney's fees to prevailing consumers. This eliminates the risk of absorbing legal costs and creates significant settlement pressure.

3. Pre-Suit Notice Requirement (§ 17.505)

The DTPA requires that a consumer must give written notice at least 60 days before filing suit, specifying the complaint, economic damages, mental anguish damages, and attorney's fees. This notice can be combined with the trademark takedown demand (as in this template) to serve dual purposes.

4. Mediation (§ 17.5051)

After the pre-suit notice, either party may request mediation. If a DTPA case is filed and the provider requests mediation, the court will order it. This can facilitate resolution.

5. "Consumer" Requirement

To bring a DTPA claim, the plaintiff must be a "consumer" who sought or acquired goods or services by purchase or lease (§ 17.45(4)). A trademark owner who purchases services impacted by the infringement may qualify. However, the DTPA does not require that the goods or services purchased form the basis of the complaint -- only that the plaintiff is a "consumer."

6. DTPA Laundry List (§ 17.46(b))

The specific deceptive practices listed in § 17.46(b) that are most relevant to trademark infringement include:

• (b)(2): Causing confusion as to source, sponsorship, or certification
• (b)(3): Causing confusion as to affiliation or association
• (b)(5): Misrepresenting sponsorship, approval, or characteristics of goods/services

C. Texas Counterfeit Mark Statute -- Additional Remedies

If the infringement involves counterfeit marks, Chapter 16, Subchapter E (§ 16.081-.103) of the Texas Business & Commerce Code provides:

• Criminal penalties for manufacturing, selling, or possessing counterfeit marks (§ 16.081, a Class A misdemeanor escalating to state jail felony for repeat offenders)
• Civil cause of action with actual damages or $1,000 minimum (§ 16.103)
• Treble damages for willful violations (§ 16.103)
• Mandatory attorney's fees (§ 16.103)
• Seizure and destruction of counterfeit articles (§ 16.103)

D. Texas Long-Arm Jurisdiction

Texas's long-arm statute (Tex. Civ. Prac. & Rem. Code § 17.042) extends jurisdiction to the full extent of due process. Specifically, jurisdiction extends to persons who:

• Do business in Texas
• Commit a tort in whole or in part in Texas
• Recruit Texas residents for employment inside or outside Texas

For out-of-state hosting providers, jurisdiction may be established through:

• Operation of data centers in Texas (Austin, Dallas, Houston, San Antonio are major data center markets)
• Provision of hosting services to Texas customers
• Causing injury to Texas consumers through tortious conduct (trademark infringement)
• The "effects test" from Calder v. Jones, 465 U.S. 783 (1984), applied by the Fifth Circuit

E. Texas Data Center Hub -- Jurisdictional Advantage

Texas is one of the largest data center markets in the United States, with major facilities concentrated in:

• Dallas-Fort Worth: One of the nation's largest data center clusters
• Austin: Growing technology hub with significant hosting infrastructure
• Houston: Major data center market
• San Antonio: Home to significant cloud and hosting operations

Many hosting providers operate infrastructure in Texas, which strengthens jurisdictional arguments and may provide venue options in the Northern, Southern, or Western Districts of Texas.

F. Practical Considerations for Texas Practitioners

• DTPA as primary leverage: The DTPA's treble damages and mandatory attorney's fees create far more financial pressure than federal trademark remedies alone. Always include DTPA claims when facts support them.
• 60-day notice: Do not forget the mandatory DTPA pre-suit notice (§ 17.505). Calendar it immediately upon sending this letter.
• Multiple federal venues: Texas's four federal districts provide venue flexibility. Choose based on the hosting provider's Texas contacts, data center locations, and desired judicial temperament.
• Texas AG enforcement: The Texas Attorney General's Consumer Protection Division actively pursues DTPA violations. Referrals can supplement private enforcement.
• State court advantages: Texas district courts handle DTPA cases regularly and are familiar with the statutory framework. The absence of federal court's "exceptional case" requirement for attorney's fees makes state court DTPA claims attractive.
• Anti-counterfeiting resources: The Texas Department of Public Safety and local law enforcement have experience with trademark counterfeiting investigations that may supplement civil enforcement.

GOOD FAITH STATEMENT

The undersigned states under good faith:

1. I am authorized to act on behalf of [________________________________], the trademark owner.
2. I have a good-faith belief that the use described herein is unauthorized.
3. The information in this notice is accurate to the best of my knowledge.
4. This notice protects legitimate trademark rights under federal and Texas law.
5. This notice also serves as the mandatory DTPA pre-suit notice under § 17.505.

ATTACHMENTS AND EXHIBITS

SIGNATURE BLOCK

Very truly yours,

____________________________________________
Signature

Name:     [________________________________]
Title:    [________________________________]
Firm:     [________________________________]
Address:  [________________________________]
          [________________________________]
Phone:    [________________________________]
Email:    [________________________________]
TX Bar:   [________________________________]
Date:     [__/__/____]

On behalf of:

[________________________________]
(Trademark Owner)

SOURCES AND REFERENCES

• Lanham Act, 15 U.S.C. § 1051 et seq.
• 15 U.S.C. §§ 1114, 1125(a), 1125(c), 1116-1118
• Tex. Bus. & Com. Code § 16.001-.103 (Texas Trademark Act)
• Tex. Bus. & Com. Code § 16.051 (Infringement)
• Tex. Bus. & Com. Code § 16.054 (Dilution)
• Tex. Bus. & Com. Code § 16.081-.103 (Counterfeit Marks)
• Tex. Bus. & Com. Code § 17.41-.63 (DTPA)
• Tex. Bus. & Com. Code § 17.46 (Deceptive Trade Practices -- Laundry List)
• Tex. Bus. & Com. Code § 17.50 (Remedies)
• Tex. Bus. & Com. Code § 17.505 (Pre-Suit Notice Requirement)
• Tex. Civ. Prac. & Rem. Code § 17.042 (Long-Arm Statute)
• 47 U.S.C. § 230(e)(2) (CDA IP Exemption)
• 17 U.S.C. § 512 (DMCA Safe Harbor -- Copyright Only)
• Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982)
• Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010)
• Falcon Rice Mill, Inc. v. Community Rice Mill, Inc., 725 F.2d 336 (5th Cir. 1984)
• Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998)
• Bd. of Supervisors for La. State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008)
• Mary Kay Inc. v. Weber, 601 F. Supp. 2d 839 (N.D. Tex. 2009)
• Texas Secretary of State -- Trademark Information: https://www.sos.state.tx.us/corp/trademark.shtml