Trademark Cease-and-Desist Letter : Legal Strategy

Your trademark cease-and-desist letter must begin by clearly identifying your trademark, including its registered status with the United States Patent and Trademark Office (USPTO) or its use as a common law mark in commerce. You should describe the specific goods or services associated with your mark and provide evidence of your ownership, such as a copy of your trademark registration certificate. Next, describe in detail how the recipient is using a mark that is confusingly similar to yours, including the channels through which they are using it (online, retail, advertising, etc.) and the specific goods or services they are offering under that mark. This clarity helps establish that a genuine likelihood of confusion exists between the marks.

The letter should explain the legal basis for your infringement claim by referencing the likelihood of confusion standard under federal trademark law. You may reference relevant factors such as the similarity of the marks, the relatedness of the goods or services, the strength of your mark, and evidence of actual confusion in the marketplace. If your trademark is registered with the USPTO, you should note that registration provides constructive notice of your ownership and creates a presumption of validity. This legal foundation strengthens your position and demonstrates that your claim is not frivolous.

Your trademark cease-and-desist letter should maintain a professional and formal tone while clearly conveying the seriousness of the matter. Avoid inflammatory or overly aggressive language that could undermine your credibility or be used against you later. Instead, use clear, direct language that explains your rights and the recipient's obligations. The letter should be addressed to the appropriate party, whether that is the company's owner, general counsel, or designated agent, to ensure it reaches the decision-maker.

Set a reasonable but firm deadline for the recipient to cease their infringing use, typically between ten and thirty days. The letter should explicitly state that failure to comply will result in legal action, including claims for damages, injunctive relief, and attorney fees. However, do not make threats that are unrealistic or that could be characterized as extortion. Your attorney can help you craft language that is appropriately firm without crossing into improper conduct.

Before responding, you should carefully evaluate whether the sender has a valid trademark infringement claim against you. Consider whether their mark is registered or used in commerce, whether it is strong or weak, whether your use creates a likelihood of confusion, and whether you have any defenses available. An attorney can help you assess the strength of the sender's position and advise you on the risks and benefits of different response strategies. If the claim appears weak, you may choose to respond by asserting your rights and explaining why their claim lacks merit.

Your response to a trademark cease-and-desist letter should be strategic and tailored to your specific circumstances. If you believe you have infringed, you may choose to cease your use of the mark and avoid litigation. If you believe your use is lawful, you may respond by explaining why you do not infringe and offering to work with the sender to resolve any confusion. You might also propose a coexistence agreement that allows both parties to use their respective marks in different markets or for different goods or services. Consulting with an attorney experienced in trademark registration and dispute resolution can help you develop a response that protects your business while minimizing legal risk.