📋 Overview

You've received a cease and desist letter claiming your business name, logo, product name, or marketing infringes someone else's trademark. Before panicking or immediately complying, understand that many trademark demand letters are aggressive overreach - and you may have strong defenses.

⚠ Don't Ignore It

Ignoring a trademark demand can lead to federal lawsuit, injunctions, and damages. A response (even a brief one) is essential.

🕒 Typical Response Window

Most demand letters give 10-30 days to respond. Don't rush, but don't miss the deadline without at least acknowledging receipt.

💰 Common Overreach

Many trademark demands are "bully" letters from companies asserting rights they don't have. Careful analysis is critical.

Common Trademark Demand Scenarios

  • Similar business name - Another company claims your name is too close to theirs
  • Domain name dispute - Trademark owner demands you transfer a domain
  • Logo similarity - Claim that your logo resembles theirs
  • Product name - Allegation your product name infringes
  • Social media handles - Demands for Instagram, Twitter handles
  • Keyword advertising - Using competitor's trademark in Google Ads
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Trademark search, likelihood of confusion analysis, and strategic response letter.

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🔍 Evaluate the Claim

Not all trademark demands are legitimate. Evaluate whether they actually have enforceable rights and whether your use creates actionable infringement.

Risk Assessment Matrix

Their Claim Your Exposure Risk Level
Federal registration, same industry High - likely valid infringement claim HIGH
Federal registration, different industry Medium - depends on fame, relatedness MEDIUM
State registration only Limited to their state - weaker claim MEDIUM
Common law (no registration) Must prove prior use, geographic scope LOW
Descriptive/generic term claimed Likely weak/invalid mark LOW

📄 Check Their Mark

  • ✓Search USPTO TESS database
  • ✓Verify registration is active (not dead)
  • ✓Check registered goods/services classes
  • ✓Note registration date vs. your first use

📝 Document Your Use

  • ✓When did you start using the mark?
  • ✓What goods/services do you offer?
  • ✓Geographic scope of your business
  • ✓How did you choose your mark?

⚠ Likelihood of Confusion Factors (Sleekcraft Test)

Courts evaluate these 8 factors in the Ninth Circuit:

  • Strength of the mark
  • Proximity of goods/services
  • Similarity of marks (sight, sound, meaning)
  • Evidence of actual confusion
  • Marketing channels used
  • Type of goods and buyer care
  • Defendant's intent
  • Likelihood of expansion

🛡 Your Defenses

Several legal defenses may protect your use even if the claimant has a valid trademark.

Fair Use (Descriptive)

You can use a trademarked term descriptively to describe your own product's characteristics. Example: Using "Apple" to describe that you sell apple-flavored products.

When to use: You're using the word in its ordinary meaning, not as a brand name.

Nominative Fair Use

You can use someone's trademark to refer to their actual product, as long as you're not suggesting sponsorship. Example: "Compatible with iPhone" or "Certified [Brand] Repair."

When to use: You need to reference their product to describe yours or your services.

Prior Use / Senior User

If you used the mark before they did (especially in your geographic area), you may have superior rights. Common law trademark rights arise from use, not registration.

When to use: You have evidence of use predating their first use or registration.

Different Goods/Services

Trademark rights are limited to specific categories. "Delta" exists as airline, faucets, and dental. If you're in an unrelated industry, confusion is unlikely.

When to use: Your business is completely different from theirs (unless they claim "famous" mark).

Weak or Generic Mark

Generic terms (PIZZA for pizza shop) cannot be trademarked. Descriptive marks get weak protection. Challenge the validity of their underlying trademark.

When to use: Their mark is a common word describing the product or service itself.

🚨 Defenses That Rarely Work

  • "I didn't know about their trademark" - Not a defense to infringement
  • "I'm a small business" - Size doesn't create immunity
  • "My use is different enough" - Consumers decide confusion, not you
  • "They're not using it actively" - Abandonment requires 3+ years non-use

⚖ Response Options

Based on your analysis, choose the appropriate response strategy.

Defend Your Rights

If you have strong defenses, respond firmly asserting your right to continue using the mark. Be professional but clear.

  • Cite your defenses specifically
  • Request proof of their rights
  • Offer limited accommodations

Negotiate Coexistence

Agree to coexist with territorial limits, industry restrictions, or visual distinctions to differentiate your marks.

  • Split markets geographically
  • Add distinguishing elements
  • Formal coexistence agreement

Rebrand Strategically

If their claim is strong and litigation is too risky/expensive, plan a transition to a new mark on your timeline.

  • Negotiate transition period
  • Avoid "phase out" admission
  • Protect inventory/materials

Challenge Their Mark

File for cancellation at TTAB or raise invalidity as defense. Offensive strategy that may eliminate their rights.

  • TTAB cancellation petition
  • Genericness/abandonment
  • Fraud on USPTO

📊 Cost Comparison: Fight vs. Rebrand

Typical small business scenario

Respond + defend (attorney)$2,000-5,000
TTAB cancellation proceeding$15,000-40,000
Federal court defense$50,000-200,000+
Rebrand (logo, materials, signage)$5,000-50,000
SMART DECISIONCase-by-case analysis

📝 Sample Responses

Customize these templates based on your specific situation.

Strong Defense Response
Re: Your Letter Dated [DATE] Regarding "[MARK]" We have reviewed your demand letter alleging trademark infringement. After careful analysis, we respectfully disagree with your claims and decline to cease use of our mark. First, your client's trademark registration in Class [X] for [GOODS] does not extend to our use in Class [Y] for [DIFFERENT GOODS]. There is no likelihood of confusion between our distinct products and customer bases. Second, we have prior use rights. Our company began using the mark in commerce on [DATE], which predates your client's claimed first use of [DATE]. Third, our use constitutes nominative fair use as we reference your client's product solely to indicate compatibility with [PRODUCT]. We are open to discussing a coexistence agreement that respects both parties' legitimate interests. However, we will not comply with demands to cease use of our lawfully adopted mark.
Request for Information
Re: Trademark Claim - Request for Supporting Documentation We acknowledge receipt of your letter dated [DATE] regarding the "[MARK]" trademark. To properly evaluate your client's claims, please provide: 1. Certified copy of any federal or state trademark registrations 2. Evidence of your client's first use in commerce (with date) 3. Evidence of current use in the marketplace 4. Identification of specific goods/services covered by claimed rights 5. Specific instances of alleged confusion you are aware of We take intellectual property rights seriously and will provide a substantive response within [14] days of receiving this documentation. Until then, we reserve all rights and defenses.
Coexistence Proposal
Re: Proposal for Trademark Coexistence While we maintain that our use does not infringe your client's trademark rights, we are interested in reaching a mutually beneficial resolution to avoid the costs and uncertainties of litigation. We propose the following coexistence arrangement: 1. Geographic Separation: Your client operates primarily in [REGIONS]; we operate in [DIFFERENT REGIONS]. 2. Industry Limitation: Your client's mark is used for [GOODS/SERVICES]; ours is limited to [DIFFERENT GOODS/SERVICES]. 3. Visual Distinction: We will ensure our mark is presented in [COLOR/STYLE] to distinguish from your client's [COLOR/STYLE]. 4. Mutual Acknowledgment: Neither party will oppose the other's trademark applications or renewals within defined scope. Please advise if your client is interested in formalizing such an arrangement.

🚀 Next Steps

Immediate actions when you receive a trademark demand.

Step 1: Don't Panic

Many cease and desist letters are overreach. Take time to analyze before responding or changing anything.

Step 2: Search USPTO

Verify their claimed registration exists and is active. Check the goods/services classes.

Step 3: Document Your Use

Gather evidence of when you started using the mark and how you use it.

Step 4: Respond Timely

Send at least an acknowledgment by their deadline. Never ignore a trademark demand.

Resources

  • USPTO TESS: tmsearch.uspto.gov - Free trademark search
  • TTAB: uspto.gov/trademarks/ttab - Administrative proceedings
  • Cal. Bus. & Prof. Code 14200+: California trademark law
  • Lanham Act (15 USC 1051-1141): Federal trademark law

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