IP Threat Letters Response Guide | Trademark, Copyright, DMCA, Patent Defense

📋 Overview

You have received a cease and desist letter claiming intellectual property infringement. Before you panic, remove content, or pay money, understand that many IP threat letters are overly aggressive, legally questionable, or outright wrong. This guide covers your defenses for trademark, copyright, DMCA, and patent claims.

™ Trademark Claims

Fair use defenses often apply. Descriptive and nominative uses are protected under the Lanham Act.

© Copyright/DMCA

Fair use is a complete defense. Counter-notices can restore content. Bad faith takedowns face liability.

🔧 Patent Demands

Demand specificity. State bad-faith assertion statutes may protect you. Many demands lack merit.

Do Not Ignore IP Letters

While many IP claims lack merit, ignoring them entirely can create problems. Document everything, respond thoughtfully, and consider professional help for significant claims. A strategic response often resolves matters without litigation.

Types of IP Threat Letters

Type	Common Claims	Key Defenses
Trademark	Infringement, dilution, counterfeiting	Descriptive fair use, nominative fair use, no likelihood of confusion
Copyright	Infringement, derivative works	Fair use (17 USC 107), independent creation, license
DMCA Takedown	Online copyright infringement	Counter-notice, fair use, 512(f) misrepresentation
Patent	Infringement of claims	Non-infringement, invalidity, bad-faith assertion statutes

™ Trademark Defenses

Trademark law is designed to prevent consumer confusion, not to give trademark owners unlimited control over their marks. Several powerful defenses may apply to your situation.

Descriptive Fair Use (Lanham Act Section 33(b)(4))

You can use a trademarked term in its descriptive sense to describe your own goods or services, as long as you are not using it as a trademark. This defense is codified in 15 U.S.C. 1115(b)(4).

Elements: (1) The use is not as a mark; (2) The use is descriptive of your goods/services; (3) The use is in good faith.

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) - The Supreme Court held that a defendant asserting fair use does NOT need to prove absence of consumer confusion. The plaintiff bears the burden of proving likelihood of confusion even when fair use is raised.

Nominative Fair Use (New Kids Framework)

You can use another's trademark to refer to the trademark owner's actual goods or services, such as in comparative advertising, commentary, or when the trademark is the only practical way to identify something.

Three-Factor Test:

The product or service cannot be readily identified without using the trademark
Only so much of the mark is used as is reasonably necessary for identification
The user does nothing to suggest sponsorship or endorsement by the trademark holder

New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) - Established the nominative fair use doctrine for using trademarks to refer to the trademark holder's goods.

Overbroad Injunction Defense (Toyota v. Tabari)

Trademark owners often demand you stop all use of their mark. Courts have held that injunctions must be carefully tailored and cannot prohibit legitimate uses such as nominative fair use.

Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) - The Ninth Circuit held that domain names using "Lexus" by independent auto brokers were nominative fair use, and struck down an overbroad injunction that prohibited any use of the mark.

When Trademark Defenses Apply

Comparative Advertising

"Our product works with [Brand]" or "Compare to [Brand]" - nominative fair use typically applies.

News and Commentary

Discussing or criticizing a company requires using their name. This is protected nominative use.

Descriptive Terms

Using common words that happen to be trademarks in their ordinary sense (e.g., "windows" for actual windows).

Resale/Repair Services

Advertising that you repair or resell [Brand] products requires using the mark.

First Check: Is There Trademark Registration?

Ask the sender to provide the USPTO registration number. Search it at tsdr.uspto.gov. Check if the mark is still active, what goods/services it covers, and whether your use falls within the registration's scope. Many cease and desist letters reference marks that are abandoned, limited in scope, or simply not registered.

© Copyright & DMCA Defenses

Copyright claims and DMCA takedowns have specific defenses and procedures. Fair use is a powerful defense, and DMCA has built-in protections against abuse.

Fair Use Under 17 USC 107

Fair use is a complete defense to copyright infringement. Courts analyze four factors, none of which is dispositive:

Factor 1: Purpose and Character of Use

Transformative uses are favored - did you add new meaning, message, or expression? Commercial use weighs against fair use but is not determinative. Commentary, criticism, parody, education, and news reporting are favored purposes.

Factor 2: Nature of the Copyrighted Work

Using factual works is more likely fair use than using creative works. Using published works is more likely fair use than using unpublished works.

Factor 3: Amount and Substantiality Used

Using less is generally better, but the key is whether you took only what was necessary for your purpose. Sometimes using the entire work is fair use (e.g., parody often requires copying the whole work to be recognizable).

Factor 4: Market Effect

Does your use substitute for the original or harm its licensing market? This is often considered the most important factor. Transformative uses typically do not harm the market for the original.

DMCA Counter-Notification (17 USC 512(g))

If your content was removed via DMCA takedown and you believe the removal was improper, you can file a counter-notification to have it restored.

Counter-Notice Requirements:

Physical or electronic signature of the subscriber
Identification of the material that was removed and its former location
Statement under penalty of perjury that you have a good faith belief the material was removed by mistake or misidentification
Your name, address, and phone number
Consent to jurisdiction of federal court in your district (or any district if outside US)
Statement that you will accept service of process from the person who filed the original notice

Timeline After Counter-Notice

Once you file a valid counter-notice, the service provider must wait 10-14 business days. If the copyright holder does not file a lawsuit and notify the provider, your content must be restored. If they do sue, the matter goes to court where you can assert fair use and other defenses.

512(f) Misrepresentation Liability

DMCA Section 512(f) creates liability for knowingly materially misrepresenting that content is infringing. This applies to both takedown notices and counter-notices.

Lenz v. Universal Music Corp. (9th Cir. 2015)

The Ninth Circuit held that copyright holders must consider fair use before sending DMCA takedown notices. A failure to consider fair use can constitute misrepresentation under 512(f).

"Fair use is not just excused by the law, it is wholly authorized by the law... A copyright holder must consider the existence of fair use before sending a takedown notification under 512(c)." - Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2015)

When to Raise 512(f)

If the takedown notice was clearly improper (obvious fair use, you own the content, the sender does not own the copyright), you may have a claim for damages under 512(f). This includes attorney fees, costs, and any other damages. However, courts require "knowing" misrepresentation, which is a high bar.

First Steps for Copyright Claims

🔍 Verify the Claim

✓ Do they actually own the copyright?
✓ Is the work registered? (Check copyright.gov)
✓ What specific elements are allegedly copied?
✓ Did you have a license or permission?

⚖ Analyze Fair Use

✓ Is your use transformative?
✓ Did you use only what was necessary?
✓ Does it harm the market for the original?
✓ Is it commentary, criticism, or parody?

🔧 Patent Demand Responses

Patent demand letters often come from "patent assertion entities" (PAEs) or "patent trolls" who acquire patents to license or litigate rather than to make products. Many of these demands are meritless, but they require careful handling.

Demand Specificity: What to Require

A legitimate patent infringement claim should include specific information. Vague, generic demands are a red flag. You have the right to ask for:

Patent Number: The specific patent(s) allegedly infringed
Claim Charts: A mapping of how each asserted claim reads on your product/service
Accused Products: Specific identification of which of your products/features allegedly infringe
Ownership Documentation: Proof the sender owns or has standing to enforce the patent

State Bad-Faith Assertion Statutes

Over 35 states have enacted laws against bad-faith patent assertions. These statutes create civil liability and, in some cases, criminal penalties for sending abusive patent demand letters.

State	Statute	Key Protections
Vermont	9 V.S.A. 4195-4199	First state to enact. Bad faith includes lack of good faith investigation, deceptive statements, demands for unreasonable fees.
California	Bus. & Prof. Code 17200	UCL claims available for deceptive patent demand letters.
Texas	Bus. & Com. Code 17.952	Prohibits bad-faith assertions; allows recovery of attorney fees and exemplary damages.
New York	Gen. Bus. Law 899	AG enforcement power; requires demand letters include specific information.

Red Flags: Likely Bad-Faith Demands

No identification of specific patent claims
No explanation of how you allegedly infringe
Demand for quick payment with discount for fast settlement
Sender is a shell company or PAE with no products
Patent appears invalid or expired
Identical letters sent to hundreds of recipients
Threats without substance or unrealistic damage claims

Patent Validity Challenges

Even if you arguably infringe, the patent may be invalid. Consider these defenses:

Prior Art

The invention was known, used, or published before the patent filing date. Search Google Patents, academic papers, and industry archives.

Obviousness

The invention would have been obvious to someone skilled in the field at the time of invention.

Invalidity on 101 Grounds

Since Alice Corp. v. CLS Bank (2014), many software patents have been invalidated as claiming abstract ideas.

IPR/PGR at USPTO

Inter partes review and post-grant review proceedings at the Patent Trial and Appeal Board can invalidate patents.

☑ What to Ask For: Information Request Checklist

Before responding substantively to any IP demand letter, request the following information. A legitimate IP holder will have this readily available.

📄 Registration Information

✓ Registration number (trademark, copyright, or patent)
✓ Registration certificate copy
✓ Current status (active, not abandoned/expired)
✓ Scope of registration (goods/services, claims)

👤 Ownership Verification

✓ Proof sender owns or has authority to enforce IP
✓ Chain of title if IP was assigned/transferred
✓ Licensing authority (if sender is not owner)

🔎 Specific Allegations

✓ Exactly which of your content/products allegedly infringes
✓ Which elements were allegedly copied (copyright)
✓ Claim charts showing infringement (patent)
✓ Evidence of consumer confusion (trademark)

📅 Timeline Information

✓ When did they first discover the alleged infringement?
✓ Screenshots/URLs with timestamps
✓ Dates of alleged infringing activity

Why Request This Information?

Requesting specific information serves several purposes: (1) It buys you time to evaluate the claim and consult counsel; (2) It tests whether the sender is serious or just sending form letters; (3) It forces them to commit to specific allegations you can evaluate; (4) It creates a record that you are acting in good faith; (5) Failure to provide basics suggests the claim may lack merit.

📝 Response Templates

Customize these templates based on your specific situation. For significant claims, have an attorney review before sending.

Information Request Response

RE: Your letter dated [DATE] regarding alleged [trademark/copyright/patent] infringement I have received your letter. Before I can evaluate your claims, please provide the following information: 1. Registration Information: - Registration number for the [trademark/copyright/patent] at issue - Copy of the registration certificate - Confirmation the registration is active and in good standing 2. Ownership: - Documentation establishing [Sender/Client] as the current owner of the IP - If the IP was assigned, the chain of title showing valid assignment 3. Specific Allegations: - Precise identification of which of my [content/products/services] you allege infringes - The specific [trademark elements/copyrighted expression/patent claims] allegedly infringed - [For trademark: Evidence of actual consumer confusion] - [For patent: Claim charts mapping each asserted claim to my accused product] 4. Timeline: - When you first became aware of the alleged infringement - Screenshots or archives with timestamps of allegedly infringing material Please provide this information within [14/21/30] days. Without this basic information, I cannot meaningfully respond to your claims. I reserve all rights and defenses. Sincerely, [Your Name]

Trademark Fair Use Defense Response

RE: Your trademark demand letter dated [DATE] I have reviewed your letter alleging trademark infringement based on my use of "[TERM]." My use is protected as [descriptive fair use / nominative fair use] under the Lanham Act. [FOR DESCRIPTIVE FAIR USE:] Under 15 U.S.C. 1115(b)(4), I am entitled to use "[TERM]" to describe my own [goods/services]. I am using the term in its ordinary descriptive sense, not as a trademark. This use is in good faith and does not create any likelihood of confusion. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004). [FOR NOMINATIVE FAIR USE:] Under the nominative fair use doctrine established in New Kids on the Block v. News America Publishing, 971 F.2d 302 (9th Cir. 1992), I am entitled to use your trademark to refer to your actual products/services. My use satisfies all three factors: (1) [Product/service] cannot be readily identified without using the mark; (2) I use only as much of the mark as necessary; (3) I do not suggest sponsorship or endorsement. Your demand that I cease all use of "[TERM]" is overbroad and would prohibit constitutionally protected speech. See Toyota v. Tabari, 610 F.3d 1171 (9th Cir. 2010). I decline your demand. I reserve all rights, including the right to seek attorney fees if you pursue meritless litigation. Sincerely, [Your Name]

Copyright Fair Use Defense Response

RE: Your copyright demand letter dated [DATE] I have reviewed your allegations regarding [CONTENT DESCRIPTION]. My use constitutes fair use under 17 U.S.C. 107. Analyzing the four factors: 1. Purpose and Character: My use is [transformative/for commentary/for criticism/for educational purposes/for news reporting]. I have added new meaning and expression rather than merely copying. 2. Nature of the Work: [Describe - e.g., the original is a factual work / the original was published]. 3. Amount Used: I used only [minimal portion / only what was necessary for my purpose]. [If applicable: The portions used are not the "heart" of the original work.] 4. Market Effect: My use does not substitute for the original and does not harm its market. [If applicable: My use serves a different market and different purpose than the original.] The fair use doctrine exists precisely to protect uses like mine. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994). I decline your demand to remove [CONTENT]. I reserve all rights and defenses. Sincerely, [Your Name]

DMCA Counter-Notification

DMCA COUNTER-NOTIFICATION To: [Service Provider DMCA Agent] I, [YOUR FULL NAME], state under penalty of perjury that I have a good faith belief that the material identified below was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled. 1. Identification of Material: The material that was removed was located at: [URL] The material consisted of: [DESCRIPTION] 2. Basis for Counter-Notice: [Select and customize as applicable:] - The material is original content that I created and own - My use of the material constitutes fair use under 17 U.S.C. 107 - The claimant does not own the copyright to the material - I have a valid license to use the material - The material is in the public domain 3. Contact Information: Name: [YOUR FULL NAME] Address: [YOUR ADDRESS] Phone: [YOUR PHONE] Email: [YOUR EMAIL] 4. Consent to Jurisdiction: I consent to the jurisdiction of the Federal District Court for [YOUR DISTRICT], and I will accept service of process from the person who provided the original DMCA notification or their agent. Signature: _____________________ Date: [DATE] [YOUR PRINTED NAME]

Patent Demand Specificity Request

RE: Your patent demand letter dated [DATE] I have received your letter alleging patent infringement. Your letter lacks the specificity necessary for me to evaluate your claims. Please provide: 1. PATENT IDENTIFICATION: - Complete patent number(s) for all patents you allege are infringed - Copies of the patent(s) including all claims 2. CLAIM CHARTS: - For each asserted patent claim, a detailed claim chart mapping each element of the claim to my specific product/service/feature - Identification of which of my products or services allegedly infringes 3. OWNERSHIP: - Documentation that [Sender] owns the patent(s) or has standing to enforce them - If assigned, the recorded assignment documents 4. LICENSING HISTORY: - Information about any licenses granted for these patents - Terms of licenses offered to similarly situated parties I note that [STATE] has enacted legislation against bad-faith patent assertions ([CITATION]). Demand letters that lack specific information about how the recipient allegedly infringes may constitute bad-faith conduct under this statute. Until you provide specific information supporting your claims, I am unable to respond further. I reserve all rights and defenses. Sincerely, [Your Name]

Need Professional Help?

Get an attorney-drafted response to protect your rights and put the claimant on notice of their risks.

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Legal Resources

Trademark: Lanham Act 15 U.S.C. 1051-1141; KP Permanent Make-Up v. Lasting Impression (2004); New Kids on the Block v. News America (1992); Toyota v. Tabari (2010)
Copyright: 17 U.S.C. 107 (Fair Use); 17 U.S.C. 512 (DMCA); Campbell v. Acuff-Rose (1994); Lenz v. Universal (2015)
Patent: 35 U.S.C. 271; Alice Corp. v. CLS Bank (2014); State bad-faith assertion statutes
USPTO: tsdr.uspto.gov (trademark search); portal.uspto.gov (patent search)
Copyright Office: copyright.gov/search
EFF: eff.org - Digital rights and fair use resources
Chilling Effects/Lumen: lumendatabase.org - Database of cease and desist letters