Sample Design Patent Demand Letters
Sample 1: Standard Design Patent Demand
[Patent Owner / Law Firm]
[Address]
[Email / Phone]
[Date]
VIA CERTIFIED MAIL AND EMAIL
[Defendant Company]
[Address]
Attn: Legal Department / CEO
Re: Infringement of U.S. Design Patent No. D[XXX,XXX] – Demand for Cessation
Dear [Recipient]:
We represent [Patent Owner], owner of United States Design Patent No. D[XXX,XXX] (the "'XXX Design Patent"), which protects the ornamental design for [article description, e.g., "a beverage container"]. A copy of the design patent is enclosed.
THE PATENTED DESIGN
The 'XXX Design Patent was issued on [Date] and claims the ornamental design shown in the patent drawings. [Patent Owner] invested significant resources in creating this distinctive design, which has become associated with [Patent Owner]'s [product line/brand].
INFRINGEMENT
[Defendant] is selling a product marketed as "[Accused Product Name]" that infringes the 'XXX Design Patent.
Enclosed as Exhibit A is a visual comparison of [Defendant]'s product and the patented design. As the comparison demonstrates, [Defendant]'s product embodies substantially the same overall visual impression as the patented design:
• Both designs feature [similar shape/contour description]
• Both share [similar proportions/dimensions]
• Both include [similar surface features or ornamentation]
• The overall visual impression is substantially identical
Under the "ordinary observer" test established in Egyptian Goddess, Inc. v. Swisa, Inc., an ordinary purchaser familiar with prior art designs would be deceived into believing [Defendant]'s product is the same as [Patent Owner]'s patented design.
DAMAGES
Design patent infringement subjects [Defendant] to significant liability under 35 U.S.C. § 289, including:
• [Defendant]'s TOTAL PROFIT from all sales of the infringing product
• Minimum statutory damages of $250 per article
• Injunctive relief barring further sales
Additionally, this letter provides actual notice of the design patent. Continued sales after receipt of this letter may constitute willful infringement, exposing [Defendant] to enhanced damages and attorney fees.
DEMAND
[Patent Owner] demands:
1. Immediate cessation of all manufacture, importation, sale, and offer for sale of [Accused Product] and any substantially similar products;
2. Recall or destruction of all infringing inventory;
3. A complete accounting of all [Accused Product] units manufactured, imported, and sold, along with revenue and profit figures;
4. Compensation for past infringement.
Please respond within fourteen (14) days. If we do not receive a satisfactory response, [Patent Owner] will pursue all available legal remedies, including federal court litigation and ITC exclusion proceedings.
Sincerely,
[Attorney Name]
Counsel for [Patent Owner]
Enclosures:
- U.S. Design Patent No. DXXX,XXX
- Exhibit A: Visual Comparison
Sample 2: Design Patent Demand – Consumer Electronics
[Company / Law Firm]
[Address]
[Date]
[Defendant]
[Address]
Attn: General Counsel
Re: U.S. Design Patent No. D[XXX,XXX] – [Product Category] Design
Dear Counsel:
[Patent Owner] holds U.S. Design Patent No. D[XXX,XXX] covering the ornamental design for [electronic device type]. We have identified [Defendant]'s [Product Name] as an infringing product.
DESIGN PATENT PROTECTION
The 'XXX Design Patent protects the distinctive ornamental appearance of [Patent Owner]'s [product], including:
• The overall form factor and proportions
• The arrangement and styling of [buttons/ports/display elements]
• The [curved edges/flat surfaces/specific contours]
• The [surface textures/finishes/ornamentation]
These design elements are shown in solid lines in the patent drawings (enclosed). Broken-line elements are not claimed.
INFRINGEMENT ANALYSIS
[Defendant]'s [Product] copies the protected ornamental features of the 'XXX Design Patent:
Visual Similarity Analysis:
┌─────────────────────────┬─────────────────────────┐
│ Patented Design │ [Defendant]'s Product │
├─────────────────────────┼─────────────────────────┤
│ [Shape feature] │ Substantially identical │
│ [Proportion feature] │ Substantially identical │
│ [Contour feature] │ Substantially identical │
│ [Surface feature] │ Substantially identical │
└─────────────────────────┴─────────────────────────┘
The differences between the patented design and [Defendant]'s product are minor and would not prevent an ordinary observer from being deceived into believing they are the same design.
DAMAGES EXPOSURE
Under 35 U.S.C. § 289, [Defendant] is liable for its TOTAL PROFIT from sales of the [Product]. Based on publicly available information, [Defendant] has sold approximately [X] units at approximately $[Y] per unit. [Defendant]'s profit exposure is substantial.
RESOLUTION
We propose:
1. [Defendant] immediately cease sales of [Product] in its current form;
2. [Defendant] provide sales data for damages calculation;
3. Parties negotiate licensing or settlement.
Alternatively, [Defendant] may redesign [Product] to avoid infringement. We are willing to review proposed redesigns before implementation.
Please respond by [Date]. We prefer resolution without litigation but will protect [Patent Owner]'s rights if necessary.
Regards,
[Name]
[Title]
Enclosure: U.S. Design Patent No. DXXX,XXX
Sample 3: Design Patent + Trade Dress Demand
[Patent Owner / Law Firm]
[Address]
[Date]
[Defendant]
[Address]
Re: Design Patent Infringement (D[XXX,XXX]) and Trade Dress Infringement
Dear [Recipient]:
We represent [Patent Owner] regarding infringement of its intellectual property rights by [Defendant]'s [Product].
DESIGN PATENT CLAIM
[Patent Owner] owns U.S. Design Patent No. D[XXX,XXX] covering the ornamental design for [article]. [Defendant]'s [Product] copies this protected design, as demonstrated in the enclosed visual comparison.
TRADE DRESS CLAIM
In addition to design patent protection, [Patent Owner]'s product design constitutes protectable trade dress under 15 U.S.C. § 1125(a). The distinctive [shape/configuration/appearance] of [Patent Owner]'s [product] has acquired secondary meaning through:
• Over [X] years of exclusive use in commerce
• $[X] million in advertising featuring the design
• [X] million units sold
• Media coverage and consumer recognition
• Intentional copying by competitors (including [Defendant])
[Defendant]'s confusingly similar product is likely to cause consumer confusion as to source, sponsorship, or affiliation.
COMBINED EXPOSURE
[Defendant] faces liability under both claims:
• Design Patent (§ 289): Total profits from infringing sales
• Trade Dress (15 U.S.C. § 1117): Defendant's profits, plaintiff's damages, costs, and potentially attorney fees
DEMAND
[Defendant] must:
1. Cease all manufacture, sale, and marketing of [Product];
2. Recall infringing products from distribution channels;
3. Provide accounting of sales and profits;
4. Compensate [Patent Owner] for infringement.
Please respond within twenty-one (21) days.
Sincerely,
[Attorney Name]
Enclosures:
- U.S. Design Patent No. DXXX,XXX
- Visual Comparison Exhibit
- Evidence of Secondary Meaning