You Got a Trademark Cease and Desist Letter: What Should You Do This Week?

Trademark disputes are decided under the federal law our main copyright and trademark law page introduces, and most start with a letter rather than a lawsuit. To see the letter from the sender's side, our post on how cease and desist letters are put together explains what they are built to do.

How a Trademark Demand Usually Unfolds, Step by Step

1. The letter arrives. It names a mark, says your name or logo is confusingly similar, and asks you to stop by a stated date.
2. You keep everything. Save the letter and your own records of when, where and on what you first used your name.
3. You check the public record. Look up the sender's mark in the USPTO's trademark search system: registered or only applied for, the goods or services listed, the key dates.
4. You compare the marks, the goods, and whose use came first.
5. You respond before the deadline, or ask in writing for more time.
6. It ends in a written agreement or moves to a forum: a federal lawsuit, a Trademark Trial and Appeal Board (TTAB) case, or both. Once served with a summons and complaint, you generally have 21 days to answer (Federal Rule of Civil Procedure 12(a)).

What Should You Look for in the Letter Itself?

Start with the claim. A letter citing a federal registration number points to 15 U.S.C. 1114, which covers use of a copy or colorable imitation of a registered mark that is likely to cause confusion. A sender without a registration relies on 15 U.S.C. 1125(a), which reaches any word, name or symbol likely to confuse people about who is behind the goods or services.

Then read the details. Which goods or services does the registration list? The registration's presumptions attach to those (15 U.S.C. 1115(a)), not to everything the owner sells. What dates of first use does the record show? A use-based application must state the date of first use anywhere and in commerce (37 CFR 2.34(a)(1)). And what exactly is demanded: a name change, destroyed inventory, a domain transfer, payment? A short deadline is the sender's choice, not a legal one.

Does It Matter Whether the Mark Is Registered?

A great deal. A Principal Register registration is prima facie evidence of the mark's validity, the registrant's ownership and its exclusive right to use the mark for the listed goods or services, though you keep every defense you would have had without it (15 U.S.C. 1115(a)). It is also constructive notice of the owner's claim (15 U.S.C. 1072), so not having seen it is rarely an answer.

Without a registration, the sender has to prove from the ground up that it owns rights that came first. A pending application sits in between: its filing date becomes nationwide constructive use only if the mark registers, and never against someone who used the mark earlier and has not abandoned it (15 U.S.C. 1057(c)). One more detail: a registrant that did not mark its goods with ® or similar notice cannot recover profits or damages unless the defendant had actual notice (15 U.S.C. 1111). A letter citing the registration gives you actual notice of it.

Would Customers Actually Be Confused?

That is the core question. The USPTO says marks need not be identical; they can be confusingly similar in sound, appearance, meaning or commercial impression. Goods or services can be related if they are used together, bought by the same people, advertised together or sold by the same kind of business. Its examination manual weighs the du Pont factors, led by the similarity of the marks and the relatedness of the goods, and notes that not every factor matters in every case (TMEP 1207.01).

Infringement under sections 1114 and 1125(a) turns on the same idea, use that is likely to cause confusion, so our page on how the USPTO decides likelihood of confusion is a fair preview of the arguments.

Who Used the Name First?

Priority often decides these disputes. If you used your name before the sender's application filing date and never abandoned it, the sender's constructive use date does not reach you (15 U.S.C. 1057(c)(1)). Prove it with dated records, not memory.

There is a geographic catch. Against an incontestable registration, a prior user that adopted its mark without knowing of the registrant's use keeps a defense only for the area where it proves continuous prior use (15 U.S.C. 1115(b)(5)). If the sender's mark is still only an application, our page on what to do when someone files for your brand covers letters of protest and oppositions.

What Does "Incontestable" Mean, and What Are Its Limits?

A registered owner's right becomes incontestable after five consecutive years of continuous use following registration, if it files a Section 15 affidavit within one year after that period and no adverse decision or pending proceeding stands in the way (15 U.S.C. 1065). A generic name never qualifies. Incontestable status makes the registration conclusive evidence of validity and ownership, but the owner must still prove infringement, and 15 U.S.C. 1115(b) keeps nine defenses open:

• Fraud in getting the registration, or abandonment of the mark.
• Use by or with the registrant's permission to misrepresent the source of goods or services.
• Use, otherwise than as a mark, of your own name in your business, or of a descriptive term used fairly and in good faith only to describe your goods or their origin.
• Your continuous use from before the registrant's constructive use date, or your own earlier registration, each limited to the area of that use.
• Use of the mark to violate the antitrust laws, or a functional mark.
• Equitable principles, including laches, estoppel and acquiescence.

Abandonment includes stopping use with intent not to resume, and three consecutive years of nonuse is prima facie evidence of it (15 U.S.C. 1127). Our page on losing a trademark through nonuse covers how that is proved.

What Does a Negotiated Solution Look Like?

Many letters end in an agreement. A phase-out gives you a fixed period to change the name, sell off stock and redirect your domain, in exchange for the sender dropping claims for past use. A coexistence agreement lets both owners keep their marks while promising to keep their uses apart. Our page on trademark coexistence and consent agreements explains what those contain and how the USPTO weighs them.

Settlement offers get some protection later. Under Federal Rule of Evidence 408, compromise offers and statements made in compromise negotiations generally cannot be used to prove or disprove the validity or amount of the disputed claim, though a court may admit them for other purposes, such as showing bias.

Can a Challenge to the Sender's Registration Change the Talks?

Sometimes it is your strongest card. Anyone who believes they will be damaged by a registration can petition the Board to cancel it (15 U.S.C. 1064). In the first five years after registration, any ground that could have blocked registration is available, including likelihood of confusion with your earlier mark (TBMP 307.02(a)). Our page on how to cancel a trademark registration walks through each route. If the sender's mark is still only an application, a letter of protest can put your registration in front of the examiner. After that, the grounds narrow to genericness, functionality, abandonment, fraud and a few others, and a mark registered over three years and never used for some or all of its goods can be challenged on that basis (15 U.S.C. 1064(3), (6)). The USPTO also runs expungement (3 to 10 years after registration) and reexamination (first 5 years) for nonuse, at $400 per class.

Know the limits. The Board decides only the right to register, not infringement, unfair competition or damages (TBMP 102.01). If a related civil action is pending, the Board may suspend its case until the court case ends (37 CFR 2.117(a)), and absent unusual circumstances it will (TBMP 510.02(a)). A court hearing the infringement case can itself order a registration canceled (15 U.S.C. 1119).

Could Your Reply Lead to a Lawsuit Sooner?

It can, in either direction. In a case of actual controversy, a federal court may declare the rights of an interested party whether or not further relief is sought (28 U.S.C. 2201(a)). A business facing a specific threat can sometimes file first and ask a court to declare that it does not infringe. The flip side: a reply signaling you are about to file may prompt the sender to sue first. Either way, it is a full federal lawsuit.

What Does Willfulness Mean for the Money?

If infringement is proved, the owner can recover the defendant's profits, its own damages and costs, subject to the principles of equity, and the court may award up to three times actual damages and, in exceptional cases, reasonable attorney fees to the prevailing party (15 U.S.C. 1117(a)). A court can also order you to stop, with a rebuttable presumption of irreparable harm once a violation or likely success is shown (15 U.S.C. 1116(a)).

In Romag Fasteners, Inc. v. Fossil Group, Inc. (2020), the Supreme Court held that willfulness is not a precondition to an award of profits, but called a defendant's mental state "a highly important consideration." Carrying on unchanged after a detailed letter, with no reasoned basis, is the kind of fact an owner will point to. Counterfeiting is treated far more harshly: statutory damages of $1,000 to $200,000 per counterfeit mark per type of goods, and up to $2,000,000 if willful (15 U.S.C. 1117(c)). Our page on trademark infringement damages covers each remedy in detail.

What Is the Difference Between a Letter and a Lawsuit?

A letter is not a court filing, and its deadline binds no one, though it does put you on notice of the claim. A lawsuit starts when a complaint is filed and you are served with a summons, and then the deadlines are real: an answer within 21 days of service, or 60 days after a waiver request was sent if you waived service (Federal Rule of Civil Procedure 12(a)(1)(A)), and a party that fails to defend faces default (Rule 55(a)). Our page on trademark lawsuits in Atlanta federal court covers what follows.

What Changes the Answer

• Registered or not. A registration carries presumptions of validity and ownership (15 U.S.C. 1115(a)); a use-only claim under 15 U.S.C. 1125(a) does not.
• The registration's age. Under five years, a confusion-based cancellation is open (TBMP 307.02(a)); over five with a Section 15 affidavit, the registration may be incontestable (15 U.S.C. 1065).
• How long the sender waited. Laches, estoppel and acquiescence remain defenses (15 U.S.C. 1115(b)(9)).

A Worked Example

Common Mistakes

• Ignoring the letter because it is "just a letter," which leaves the sender only one next step.
• Replying the same day with an apology or admission, such as "we know your brand," before checking dates and goods.
• Assuming a registration covers everything the sender sells, rather than the goods or services it lists.
• Treating a state business name filing as an answer to a federal claim. Our page on common law, Georgia and federal trademark rights explains why they do different jobs. Our page on LLC names and trademarks covers the same gap from the start.
• Rebranding without a written agreement, then getting a second demand for past profits.
• Throwing out old packaging and records, your proof of first use.

What to Do This Week

1. Calendar the response date and decide whether to ask for more time.
2. Pull the sender's record: registration number, listed goods or services, filing and registration dates, dates of first use, any Section 15 affidavit.
3. Collect dated proof of your first use and everywhere you have used the name since.
4. List where and to whom you sell, next to the sender's markets.
5. Hold off on expanding the name into new products or territories.
6. Have a trademark lawyer review the letter and your evidence before anything goes back.

Frequently Asked Questions

Do You Have to Respond by the Date in the Letter?

No law requires it; the sender picked that date. But a missed date can prompt a filing, and a short written request for time usually costs nothing.

Can You Keep Selling While You Negotiate?

That depends on the strength of the claim. Continued use after notice is a fact a court may weigh in choosing a remedy, so decide deliberately, and consider pausing any expansion while talks go on.

Should You File Your Own Trademark Application Now?

It may help, but it will not leapfrog an earlier filing. In USPTO examination, priority among conflicting pending applications goes to the earlier effective filing date, regardless of whose use came first (TMEP 1208.01).

Can You Recover Your Legal Fees If the Claim Is Baseless?

Possibly, in court and only in exceptional cases. The statute allows reasonable attorney fees to the prevailing party, which includes a defendant who wins (15 U.S.C. 1117(a)).

What If the Letter Is About a Copyright Instead?

Different rules apply, starting with how registration timing controls statutory damages. Our page on what to do after a copyright infringement demand letter covers that side.

Does a Letter About Your Domain Name Follow the Same Rules?

Partly. A domain can be part of a confusion claim, and federal law adds a separate cybersquatting claim for bad faith registrations, explained on our page about recovering a domain name registered in bad faith.

Zala IP Law advises businesses and creators across the United States on trademark disputes under federal law. If a cease and desist letter has landed on your desk, request a consultation or call 404-313-1701, and have the letter, the response date and your earliest proof of use ready.