To respond to a trademark cease and desist letter, read it carefully within the deadline it sets (usually 10 to 14 days), confirm the sender and their trademark are real, document your own use of the mark, talk to an intellectual property attorney, and send a written reply that either complies with the demand, opens negotiations, or disputes the claim on specific legal grounds. Ignoring the letter is the one option that reliably makes things worse.
Read the Letter and Check Whether It’s Legitimate
First, pin down the basics. Who sent it: a company, an individual, or an attorney writing on their behalf? Which trademark do they claim you’re infringing? What specific activity do they want stopped, and by when? Most letters demand action within 10 to 14 days, though some allow 30. A missed deadline won’t automatically trigger a lawsuit, but it signals you aren’t taking the matter seriously, and that impression can hurt you later.
Before you spend a dollar on legal fees, make sure the letter is real. Trademark scams are common, and fraudulent letters sometimes copy a law firm’s letterhead or invoke an actual attorney’s name to make a payment demand look official. Warning signs include:
- Demands for immediate payment paired with vague descriptions of the alleged infringement.
- References to agencies that don’t exist, such as the “U.S. Patent and Trademark Bureau” or “Trademark Compliance Center,” rather than the U.S. Patent and Trademark Office (USPTO).
- Misspelled words in the letterhead, overuse of government seals, or amateur formatting.
- Any suggestion that the USPTO itself is invoicing you. The USPTO does not send invoices, demand payment by email, or call trademark owners to collect fees.
If a letter asks you to wire money to “reserve” your trademark or domain, or warns that a third party is about to register your mark unless you pay now, that’s almost certainly a scam. A legitimate cease and desist identifies a specific trademark registration or common law mark, describes the alleged infringement in detail, and comes from a verifiable attorney or company.
Verify the Sender’s Trademark
Even a genuine letter can rest on a weaker claim than it sounds. Look up the mark yourself through the USPTO’s free Trademark Search system at uspto.gov/trademarks/search. For status details, filing dates, and the goods or services covered, use the Trademark Status and Document Retrieval (TSDR) system.
What you find changes the picture. A federally registered mark on the Principal Register carries a legal presumption of validity and nationwide priority from the filing date. A registration that has been in force for more than five years with the proper maintenance filings is incontestable, which means it serves as conclusive evidence of the owner’s exclusive right to use the mark on the registered goods or services.1Office of the Law Revision Counsel. United States Code Title 15 – 1115 A pending application, or no federal registration at all, means the sender is likely relying on common law rights, which are typically limited to the geographic area where the mark has actually been used in commerce.
Check the scope too. Trademark rights are not unlimited. A registration for “athletic footwear” doesn’t necessarily reach a similar name used for accounting software. Protection turns on whether consumers would be confused about the source of the goods or services.
Document Your Own Use and Talk to an IP Attorney
Before you say anything to the sender, gather your own records. That means the date you first used the mark, how you’ve used it (products, website, social media, signage), any trademark searches you ran before adopting it, and any state or federal registrations you hold. Continuous use in a specific area since before the sender’s filing date can give you prior use rights in that territory, even without a federal registration.1Office of the Law Revision Counsel. United States Code Title 15 – 1115
This is the point to bring in an intellectual property attorney. Your response becomes a written record that can be used in litigation, so wording matters. An attorney can size up the sender’s claim, evaluate your defenses, and steer you away from language that could be treated as an admission. Many IP lawyers will review a cease and desist letter for a flat fee or during an initial consultation.
Defenses That May Apply
Not every cease and desist letter reflects a valid infringement claim. Several recognized defenses can undercut the sender’s position, and knowing which ones fit your situation tells you how much leverage you have.
Descriptive Fair Use
If you’re using a word or phrase to describe your own product rather than as a brand name, descriptive fair use may apply. It covers ordinary descriptive use made in good faith, even when the term happens to be trademarked by someone else. Using “sharp” to describe a knife blade, for example, when “Sharp” is a registered mark for electronics. The Lanham Act specifically protects use of a term or device that is descriptive of and used fairly and in good faith only to describe a party’s goods, services, or geographic origin.1Office of the Law Revision Counsel. United States Code Title 15 – 1115
Nominative Fair Use
Nominative fair use lets you reference someone else’s trademark to identify their product or service when there’s no practical alternative. A phone repair shop advertising “We fix iPhones” is the textbook example. Courts generally require three things: the product can’t be readily identified without using the mark, you use only as much of the mark as necessary, and your use doesn’t suggest sponsorship or endorsement by the trademark owner.
Prior Use Rights
If you adopted the mark without knowledge of the sender’s use and have used it continuously since before their registration date, you may have a prior use defense. It’s geographically limited, protecting your continued use only in the area where you can prove that continuous prior use.1Office of the Law Revision Counsel. United States Code Title 15 – 1115
No Likelihood of Confusion
Every infringement claim rests on the argument that consumers are likely to be confused about the source of goods or services. Courts use multi-factor tests, weighing how similar the marks are, how closely related the goods or services are, the strength of the plaintiff’s mark, evidence of actual confusion, and the channels through which products reach consumers. If the marks live in different industries or look and sound nothing alike, the confusion argument may not hold.
Laches
If the trademark owner knew about your use for years and did nothing, laches may apply. You have to show unreasonable delay and that the delay prejudiced you, typically because you invested in the brand during that period. Courts often use the state’s statute of limitations for fraud as a benchmark: waiting longer than that after learning of your use can trigger a presumption of laches.
Choose Your Response Strategy
With your evidence collected, the sender’s mark verified, and your defenses assessed, several paths open up. Your attorney can help you pick based on the strength of your position and what the mark is worth to your business.
Comply With the Demand
Sometimes the sender has a strong registration, the marks are clearly similar, and rebranding is cheaper than fighting. Compliance can mean phasing out the mark on a negotiated schedule rather than pulling everything down overnight, which is worth asking for. If you agree to comply, get the terms in writing so you have a clean record of what you promised and by when.
Negotiate a Coexistence Agreement
Many disputes end with both sides agreeing to share the marketplace. A coexistence agreement typically defines geographic boundaries, limits each party to specific product categories, or establishes visual differences between the marks to reduce confusion. You keep your brand identity, and the trademark owner gets the protection they need.
Negotiate a License
If the sender’s rights are clear but you want to keep using the mark, a license may be workable. You continue using the mark under set conditions, usually in exchange for royalties. The owner retains quality control over how the mark is used, which is a legal requirement for the license to be valid.
Dispute the Claim
If your defenses are strong, push back. A response letter that identifies the weaknesses in the sender’s position, whether that’s a lack of consumer confusion, your prior use rights, or fair use, sometimes resolves the dispute outright. Many trademark owners send cease and desist letters as an opening move without intending to litigate, especially when the cost of a federal lawsuit would dwarf whatever harm they’re experiencing.
File for Declaratory Judgment
In rare cases, when your rights are strong and the threat of litigation is stalling your business, you can go on offense by filing a declaratory judgment action in federal court. Under the Declaratory Judgment Act, a court can declare the legal rights of both parties when an actual controversy exists.2Office of the Law Revision Counsel. United States Code Title 28 – 2201 Creation of Remedy You pick the forum instead of waiting to be sued in theirs, and you get a definitive ruling. It’s an aggressive move that fits best when negotiations have stalled and you’re confident in your position.
Writing the Response
Whatever path you choose, draft the response carefully, ideally with your attorney’s direct involvement. Keep the tone professional. Hostile or dismissive language accomplishes nothing and can shut down a sender who might otherwise negotiate.
Reference the original letter by date and any file numbers. State your position clearly: comply, negotiate, or dispute. If you’re disputing, lay out your reasoning concisely. You don’t need to present your entire legal case in the reply, but signaling the basis of your defense shows the sender you’ve done the work.
Do not make admissions. Phrases like “we didn’t realize we were infringing” or “we only used the mark a few times” can be used against you later. Stick to factual statements about your position and avoid characterizing your conduct in ways that concede the sender’s framing.
Never Ignore the Letter
Doing nothing is the worst option. A cease and desist letter puts you on notice that someone claims your use infringes their rights. If you keep using the mark after that notice and the dispute reaches court, your continued use can be characterized as willful infringement. That distinction matters, because willful infringement opens the door to enhanced damages and attorney fee awards that don’t apply to an innocent infringer.3Office of the Law Revision Counsel. United States Code Title 15 – 1117 Recovery for Violation of Rights
Silence also closes the door on negotiation. Trademark owners who hear nothing back tend to assume the recipient is uncooperative or indifferent, and that makes escalation to litigation more likely. Even if you plan to fight the claim, a timely response keeps communication open and shows good faith.
What Can Happen After You Respond
The most common outcome is further negotiation. The sender may counter your proposal, suggest a license, or float a coexistence framework. Those discussions can take weeks or months, but they’re almost always cheaper and faster than litigation. In other cases, the sender simply stops writing, especially when your response has exposed weaknesses in their claim.
TTAB Proceedings
If the dispute involves a trademark registration rather than just marketplace use, either party may initiate proceedings before the Trademark Trial and Appeal Board (TTAB). An opposition proceeding can block a pending application from being registered and must be filed within 30 days after the application is published, or within any granted extension. A cancellation proceeding targets an existing registration and can be filed at any time, though registrations older than five years can only be challenged on limited grounds such as abandonment, fraud, or genericness.4United States Patent and Trademark Office. Initiating a New Proceeding
One boundary worth knowing: the TTAB only decides whether a mark should be registered or remain on the register. It does not decide whether someone has the right to use a mark in the marketplace. That question can only be resolved in federal court.
Federal Litigation and Remedies
If negotiations fail, the trademark owner may file a federal infringement lawsuit under the Lanham Act. The law protects both registered marks under 15 U.S.C. § 1114 and unregistered marks under 15 U.S.C. § 1125(a), so the absence of a federal registration does not necessarily mean you’re safe.5Office of the Law Revision Counsel. United States Code Title 15 – 1114 Remedies; Infringement To win, the plaintiff must prove they own a valid mark and that your use creates a likelihood of confusion.
If a court finds infringement, the remedies are substantial. The court can issue an injunction ordering you to stop using the mark, and a plaintiff who proves a violation is entitled to a rebuttable presumption of irreparable harm when seeking that injunction.6Office of the Law Revision Counsel. United States Code Title 15 – 1116 Injunctive Relief On the money side, a plaintiff can recover the defendant’s profits attributable to the infringement, the plaintiff’s own actual damages, and the costs of the lawsuit. The court has discretion to increase actual damages up to three times when the circumstances warrant it. In counterfeit cases, treble damages become mandatory unless the court finds extenuating circumstances.3Office of the Law Revision Counsel. United States Code Title 15 – 1117 Recovery for Violation of Rights Attorney fees can be awarded to the prevailing party in “exceptional cases,” a standard that typically involves willful, deliberate, or bad-faith conduct.
If the court finds no infringement, you’re free to keep using your mark. But even a win costs what the litigation cost to run, which is why a careful, well-timed response at the cease and desist stage is almost always the better place to spend your effort.