Litigation Hold and Preservation Notices in Trademark Disputes
Conserve la evidencia desde el primer aviso: mensajes de WhatsApp, anuncios y registros de ventas.
Trademark cases are won and lost on listings, ads, sales records, and messages, and much of that evidence deletes itself. Whether you are sending a letter or answering one, the duty to preserve can start before any lawsuit is filed. A clear hold notice, followed through, protects your case and keeps you out of a sanctions motion.
The duty to preserve starts before the lawsuit
In federal court, where most trademark cases are heard, the obligation to keep relevant evidence does not wait for a complaint to be served. The Eleventh Circuit describes spoliation as the failure to preserve evidence in "pending or reasonably foreseeable litigation" (Graff v. Baja Marine Corp., 2009). Federal Rule of Civil Procedure 37(e) applies to electronically stored information "that should have been preserved in the anticipation or conduct of litigation."
The duty applies to both sides. A brand owner that is preparing to send a cease and desist or demand letter can reasonably anticipate litigation; so can the business that receives one. A sender that keeps auto-deleting its own chats while accusing a competitor of infringement is exposed in the same way as the recipient.
A preservation notice, sometimes called a litigation hold letter, does two jobs. Sent internally, it tells your own people and systems to stop deleting. Sent to the other side, it identifies what you expect them to keep and fixes the date they were told. Either way, it is evidence that reasonable steps were taken, or that the other side was put on notice and did not take them.
Common trigger points in trademark disputes
- Deciding to send a cease and desist or demand letter
- Receiving such a letter, or a preservation letter
- A marketplace takedown or account suspension tied to an IP complaint
- A Customs detention or seizure notice involving your goods
- A TTAB opposition or cancellation over the same marks
- A UDRP complaint where a lawsuit may follow
Florida state courts take a narrower view of when the duty arises; see Florida state-court spoliation basics below. Because the federal standard is broader and most trademark claims can be heard in federal court, we advise clients to preserve on the federal timeline.
What to preserve in a trademark dispute
Trademark cases turn on how a mark was used, where, to whom, and with what results. That evidence is scattered across platforms that change or delete content on their own schedule.
Marketplace listings
Amazon, Walmart, eBay, Mercado Libre, Temu, and Shopify pages as they appeared, with ASINs or item numbers, images, titles, and edit histories.
Advertising
Search and social ad campaigns, keywords bid on, creative files, and performance reports, including paused or deleted campaigns.
Sales data
Units, revenue, returns, and costs by product and channel. This is the evidence for profits and damages under 15 U.S.C. § 1117(a).
Email and documents
Naming and branding decisions, clearance searches, design drafts, and correspondence with agencies and partners.
Social media
Posts, stories, comments, direct messages, and account handles, including content that has been archived or deleted.
Supplier and import records
Purchase orders, factory communications, packaging proofs, bills of lading, and customs entries, which bear on origin, knowledge, and counterfeiting.
Website versions
Content management history, prior versions, analytics, and domain records. Archived captures help, but your own server records are better.
WhatsApp and other chat apps
Business chats on WhatsApp, iMessage, Telegram, WeChat, Slack, or Teams, on company and personal phones used for work.
Disappearing messages
Signal, WhatsApp disappearing messages, and chat tools with short retention. Turn off auto-delete for every custodian once a hold issues.
Customer communications
Misdirected orders, reviews, complaints, and support tickets that mention the other brand. Often the most persuasive evidence in the case.
Physical evidence
Samples, packaging, labels, and test purchases, kept with chain-of-custody records. Do not return or destroy inventory under dispute.
Platform records
Brand Registry reports, seller account data, and complaint histories. Some must be requested from the platform; download what you can now.
Rule 37(e): what happens when electronic evidence is lost
Rule 37(e) has governed lost electronically stored information in federal court since December 1, 2015. It asks threshold questions first, then allows two tiers of response.
It must be information that should have been preserved "in the anticipation or conduct of litigation."
The rule asks for reasonable steps, not perfection. Disabling auto-delete, issuing a written hold, and collecting key devices are the kinds of steps courts look for.
If the same messages can be obtained from the other party, a backup, or a platform, the rule does not apply.
| Rule 37(e)(1)Prejudice | Rule 37(e)(2)Intent to deprive | |
|---|---|---|
| Finding required | Prejudice to another party from the loss | The party acted with the intent to deprive another party of the information's use in the litigation |
| What the court may do | Order measures no greater than necessary to cure the prejudice | Presume the information was unfavorable; instruct the jury that it may or must so presume; or dismiss the action or enter a default judgment |
| Typical measures | Additional discovery, allowing evidence or argument about the loss, excluding related evidence, fees for the motion | Adverse inference, or terminating sanctions |
| Applies to | Electronically stored information only | Electronically stored information only |
◆ marks rows where the two tiers differ.
Intent can be inferred from failures
In Skanska USA Civil Southeast Inc. v. Bagelheads, Inc., 75 F.4th 1290 (11th Cir. 2023), the court affirmed Rule 37(e)(2) sanctions where a company failed to back up custodians' phones, did not suspend its routine phone-wiping practices, and did not collect data for months after a hold. There was no direct evidence of bad faith; the circumstantial evidence was enough, and no separate showing of prejudice was required.
Rule 37(e)(2)Goods and samples fall outside 37(e)
Rule 37(e) covers electronic information. For tangible evidence such as product samples or packaging, federal courts rely on their inherent authority, and the Eleventh Circuit treats bad faith as a key factor (Tesoriero v. Carnival Corp., 965 F.3d 1170 (11th Cir. 2020)).
Inherent authorityNo change to 37(e) in 2025 or 2026
The amendments effective December 1, 2025 changed Rules 16 and 26 on privilege logs. No civil-rule amendments took effect December 1, 2026, and the pending amendments on the federal judiciary's list do not include Rule 37. Rule 37(e) reads as adopted in 2015.
As of October 2026Florida state-court spoliation basics
Some trademark disputes are litigated in Florida state court, for example claims under Chapter 495, FDUTPA, or contracts. Florida's approach differs from the federal one in important ways.
Effective January 1, 2020, Florida's rule for lost electronically stored information follows the federal structure: reasonable steps, measures no greater than necessary to cure prejudice, and severe sanctions only on a finding of intent to deprive. Its commentary directs that it be read consistently with Federal Rule 37(e).
Several Florida appellate courts have held that there is no common-law duty to preserve evidence merely because litigation is anticipated; the duty arises from a contract, a statute, or a properly served discovery request. Other decisions use broader language. The law is not uniform, which is why a written preservation request matters.
The Florida Supreme Court held there is no independent cause of action for spoliation by a party to the case. The remedies are discovery sanctions and evidentiary presumptions within the case itself.
Where a party fails to keep evidence it had a duty to keep, a Florida court may apply a rebuttable presumption against it, or allow an adverse inference instruction such as Florida Standard Jury Instruction 301.11.
A third-party spoliation claim can lie against a non-party that had a legal or contractual duty to preserve, such as a supplier or a former contractor, if the loss significantly impaired the claim.
A dispute that starts in state court can end up in federal court, and the other way around. Holding evidence only from the date of a discovery request is a risk most businesses should not take.
A sender's checklist and a recipient's checklist
Use the first if you are asserting the claim and asking the other side to preserve. Use the second if you have received a letter, a complaint, or a preservation demand.
Sender's checklist
- Issue your own internal hold first, before any letter goes out
- Identify the other side's likely custodians, platforms, and storefronts
- Capture the infringing listings, ads, and websites yourself, with dates and URLs
- List the categories you expect preserved, tied to the claims, with a date range
- Name chat apps and disappearing-message settings expressly
- Ask the other side to preserve physical goods, packaging, and supplier records
- Send to the business, its registered agent, and its counsel if known, with proof of delivery
- Ask marketplaces and hosts to preserve account data where their procedures allow
- Keep the request proportionate; an overbroad demand is easy to dismiss
Recipient's checklist
- Calendar any deadline and send the notice to counsel the same day
- Suspend auto-delete on email, chat, and collaboration tools for key people
- Turn off disappearing messages on WhatsApp and similar apps used for work
- Stop routine wiping of phones and laptops for departing employees
- Save listing histories and ad accounts before changing or removing anything
- Export sales, returns, and cost data for the products at issue
- Keep physical inventory and samples; do not return or destroy them
- Tell suppliers, agencies, and marketplace managers in writing to preserve
- Record what you did and when; it is your evidence of reasonable steps
Stopping use of a disputed mark is often wise, and it is compatible with preservation. Change the live listing; keep the record of how it looked.
How to write and send a hold notice
An internal hold and an outgoing preservation letter follow the same logic: say what the dispute is about, what must be kept, by whom, and from when.
- Day 0Identify the disputeThe marks, products, parties, and claims, described in plain terms.
- Day 0Map custodiansPeople, teams, vendors, and agencies who touched the mark.
- Day 0–1Map systemsEmail, chat, phones, marketplaces, ad accounts, websites, accounting.
- Day 1Issue the noticeWritten, in the custodians' language, with a named contact.
- Days 1–7Lock and collectDisable auto-delete, image key devices, export platform data.
- OngoingConfirm and refreshAcknowledgments, reminders, new custodians, and release at the end.
A good internal notice is short, specific, and written for non-lawyers. It names the products and marks, gives examples of what to keep, and tells people plainly not to delete, edit, or move anything related. It should explain that the hold overrides normal retention policies, and that it applies to personal devices and accounts used for work.
An outgoing preservation letter to the other side should be tied to the claims and the period at issue. It can be sent with a cease and desist or demand letter, or separately. A separate letter is often better: it carries no settlement discussion and can be used freely to show what the other side was told and when.
Notices only work if someone follows up. Courts look at what was done after the hold, not just whether one was sent. In Skanska, a written hold existed; the failure was in not backing up phones and not stopping routine wiping.
Five things every notice should say
- What the dispute isMarks, products, and parties, without legal argument.
- What to keepCategories and examples, including chats and ephemeral apps.
- From whenA start date tied to the facts, such as the first use of the disputed mark.
- What not to doDelete, edit, wipe, factory-reset, or switch on disappearing messages.
- Who to askA named contact, and a request to confirm receipt.
Preservation for foreign parties and data held abroad
Latin American and European businesses involved in U.S. trademark disputes face the same preservation duty as U.S. parties. A U.S. court can order a party to produce evidence located abroad under the Federal Rules; the Hague Evidence Convention offers optional procedures but is not exclusive (Société Nationale Industrielle Aérospatiale v. U.S. District Court, 1987).
Data protection law affects how preservation is done, not whether it is done. For EU data, The Sedona Conference recommends preserving in place where possible, identifying a lawful basis for the processing under the GDPR, giving custodians clear notice, and considering works councils or employee representatives where local law requires it. Transfers of personal data out of the EU raise separate questions that should be handled before any collection.
In much of Latin America, business runs on WhatsApp. Hold notices for those teams should say so directly, in Spanish or Portuguese, and should cover personal phones used for work.
Points we cover for foreign parties
- Hold notices in the custodians' language
- Preserving in place before any transfer to the United States
- Coordination with local counsel on privacy and labor rules
- Records held by distributors, factories, and agents abroad
Latin American Brands · European Brands · Foreign Trademark Counsel
How we help on either side
Robert H. Thornburg and Susan J. Latham handle Lanham Act and false advertising litigation; James R. Leahy handles technology and e-commerce disputes, where most of the data lives; Melissa Dangond Crews works with Spanish-speaking clients.
- Step 1Scope the disputeClaims, period, parties, and the evidence that will matter.
- Step 2Draft the noticesInternal hold, outgoing preservation letter, or both.
- Step 3Lock down sourcesWith your IT team or a forensic vendor where needed.
- Step 4Answer the other sideRespond to their preservation demand, narrowing it where it overreaches.
- Step 5Carry it into the caseRule 26(f) discussions, discovery, and any spoliation motion.
Five common preservation mistakes in trademark disputes
Spoliation problems rarely come from deliberate destruction. They come from routine systems that keep running after the duty arises.
Leaving auto-delete on
Email retention rules, chat retention settings, and disappearing messages keep deleting after a hold should have issued.
Rule 37(e)Turn off automatic deletion for key people the day the duty arises.
Wiping departing employees' phones
Routine resets of returned phones destroyed the texts in Skanska, and the court inferred intent from the failure to stop.
Skanska (11th Cir. 2023)Suspend device wiping for custodians and image their phones.
Taking listings down without a record
A seller removes the disputed listing to show good faith, and with it the images, titles, and sales history the case depends on.
Marketplace dataCapture and export first, then change.
Sending a hold and stopping there
A notice that is never followed by collection, reminders, or checks is weak evidence of reasonable steps.
Reasonable stepsAssign someone to confirm compliance and document it.
Forgetting the sender's own data
Brand owners focus on the infringer and overlook their own records of first use, confusion, and marketing, which the defendant will ask for.
Both sidesHold your own evidence before you ask anyone else to hold theirs.
Frequently asked questions
When does the duty to preserve begin in a trademark dispute?
In federal court, when litigation is pending or reasonably foreseeable. For a brand owner, that is often when it decides to send a cease and desist or demand letter; for the recipient, when it receives one. Florida state courts have tied the duty more narrowly to a contract, statute, or discovery request.
Does a preservation letter create a legal duty?
In federal court, the duty comes from the anticipation of litigation, and a letter is strong evidence of when that began. In Florida state court, some appellate decisions say a letter alone does not create a duty. Either way, it documents what the recipient was told.
Do I have to preserve WhatsApp messages?
Yes, if they are relevant and you are under a duty to preserve. Chat and ephemeral messages are electronically stored information. Turn off disappearing messages and back up the relevant chats.
Can I stop selling the product while preserving evidence?
Yes. Stopping use and preserving evidence are compatible. Capture the listing, ads, and sales data first, then change or remove them.
What sanctions can a federal court impose for lost data?
Under Rule 37(e)(1), measures no greater than necessary to cure prejudice. Under Rule 37(e)(2), only on a finding of intent to deprive, a presumption or jury instruction that the information was unfavorable, or dismissal or default judgment.
Has Rule 37(e) changed recently?
No. Rule 37(e) has read the same since December 1, 2015. The December 1, 2025 amendments concerned privilege logs under Rules 16 and 26.
How long must we keep the evidence?
Until the dispute is fully resolved, including appeals, and counsel releases the hold in writing. A settlement agreement should say when holds may be lifted.
Our records are in Spain and Colombia. Do U.S. rules reach them?
A U.S. court can order a party to produce documents it controls abroad. Local privacy and labor laws affect how they are preserved and transferred, so we coordinate with counsel there.
Talk to us before evidence is lost
Send us any letter you sent or received, the deadline if there is one, and a short description of where your records live: email, chat apps, marketplaces, ad accounts.
- Internal hold notices in English or Spanish
- Outgoing preservation letters tied to your claims
- Responses to overbroad preservation demands
- Spoliation motions and defense in federal and Florida courts
Prefer to talk first? Call or email, or message us on WhatsApp. Atendemos en español.
- Federal Rule of Civil Procedure 37 (Cornell LII)
- Pending rules amendments, U.S. Courts
- Amendments to the Federal Rules of Practice and Procedure (effective Dec. 1, 2025: Civil Rules 16 and 26), E.D. Tenn.
- Skanska USA Civil Southeast, Inc. v. BagelHeads, Inc., 75 F.4th 1290 (11th Cir. 2023), Florida Business Law summary
- Eleventh Circuit affirmed sanctions for spoliation of cellphone data, eDiscovery Today (2023)
- Graff v. Baja Marine; Tesoriero v. Carnival (11th Cir.), Brown Sims Longshore Update
- Cool Change: Evolution and Explanation of New Florida Rule of Civil Procedure 1.380(e), The Florida Bar Journal (2020)
- Spoliation of Evidence and Non-Party Witnesses, The Florida Bar Journal (2022)
- Does a party to litigation have a common law duty to preserve evidence in Florida? Kennedys (2023)
- The hidden litigation risk of disappearing messages, Reed Smith (2026)
- The Sedona Conference Commentary on Managing International Legal Holds (2022)
- Société Nationale Industrielle Aérospatiale v. U.S. District Court, 482 U.S. 522 (1987) (Cornell LII)
General information, not legal advice for your situation. Statutes, rules, and fees as of October 2026. Last reviewed October 28, 2026.