📋 Overview

You've received a cease and desist letter claiming your business name, logo, or product infringes on someone's trademark. Trademark disputes are governed by the Lanham Act (15 USC 1051) and focus on preventing consumer confusion. Not every similar name is infringement - you may have strong defenses.

Don't Ignore It

Failure to respond may be used against you in court to show "willful" infringement, which can triple damages.

Document Everything

Preserve your evidence of first use, trademark registration, and business history before responding.

Time to Respond

Most C&D letters give 10-30 days to respond. Use this time to investigate and prepare a strategic response.

Common Trademark Disputes

  • Similar business names - Competitor claims your name is too similar to theirs
  • Domain name disputes - Claims you registered a domain that infringes their mark
  • Logo similarity - Allegations that your logo copies or imitates their design
  • Product names - Claims your product name infringes an existing trademark
  • Social media handles - Disputes over usernames on platforms
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Trademark Response Service

Professional cease and desist response on attorney letterhead, includes trademark search and likelihood of confusion analysis.

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🔍 Evaluate the Claim

Before responding, assess the strength of their claim and your position. Trademark infringement requires "likelihood of confusion."

Likelihood of Confusion Factors (Sleekcraft Test - 9th Circuit)

Factor What Courts Consider Your Analysis
Strength of mark Is their mark famous, distinctive, or generic? Weak/generic marks get less protection
Similarity of marks How similar are the names, logos, or designs? Look at sight, sound, meaning
Relatedness of goods/services Do you compete or operate in same markets? Different industries = less confusion
Marketing channels Do you sell through same channels? Different channels reduce confusion
Consumer sophistication How careful are your buyers? B2B = more sophisticated buyers
Intent Did you intend to copy their mark? Independent creation is defense
Actual confusion Any evidence customers were confused? No confusion = strong defense

📄 Verify Their Rights

  • ✓ Search USPTO for their registration
  • ✓ Check if registration is still active
  • ✓ Verify they own the mark they claim
  • ✓ Check registered goods/services classes

📋 Document Your Rights

  • ✓ Date you started using your mark
  • ✓ Evidence of first use (invoices, ads)
  • ✓ Your trademark registration (if any)
  • ✓ Geographic scope of your business

Check USPTO Database

Search the USPTO Trademark Electronic Search System (TESS) at uspto.gov. Verify the claimant's registration status, classes, and actual mark. Many cease and desist letters overstate trademark rights.

🛡 Your Defenses

Trademark law provides several defenses against infringement claims.

Prior Use / Senior Rights

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

When to use: You have evidence of using your name before their first use or registration date.

Descriptive Fair Use

You can use descriptive terms to describe your own products/services, even if someone has trademarked them. Classic fair use protects truthful description.

When to use: You're using common words descriptively, not as a brand identifier.

Nominative Fair Use

You can reference their trademark when necessary to identify their product, such as for comparison, compatibility, or repair services.

When to use: You're mentioning their brand to reference their actual product (e.g., "Compatible with iPhone").

Different Markets / No Confusion

Trademark rights are limited to specific goods/services and geographic areas. If you operate in completely different markets, there may be no likelihood of confusion.

When to use: You sell different products/services to different customers in different locations.

Weak or Generic Mark

Generic terms (like "Computer Store") cannot be trademarked. Descriptive marks get limited protection. Only arbitrary, fanciful, or suggestive marks get strong protection.

When to use: Their mark is a common word or descriptive term in the industry.

Concurrent Use Rights

Under 15 USC 1052(d), the USPTO can allow concurrent registration of similar marks if both parties used them in good faith in different geographic areas before a conflict arose. This may preserve your rights in your territory.

⚖ Response Options

Based on your evaluation, choose the appropriate response strategy.

Assert Your Rights

If you have strong defenses, respond asserting your right to use the mark. Document your first use date, different market, or fair use defense.

  • Preserves your brand
  • Puts them on notice of your position
  • May deter lawsuit

Negotiate Coexistence

Propose a coexistence agreement where both parties agree to use the mark in defined ways to avoid confusion.

  • Both parties keep using mark
  • Clear boundaries established
  • Avoids litigation costs

Modify Your Mark

If their claim has merit, consider rebranding or modifying your mark to differentiate from theirs.

  • Resolves dispute quickly
  • Avoids legal costs
  • May require rebranding costs

File for Cancellation

If their registration is invalid (fraud, abandonment, genericness), you may petition to cancel their trademark at the USPTO.

  • Eliminates their federal rights
  • Offensive strategy
  • Complex proceeding

Litigation Considerations

Trademark lawsuits are expensive ($150,000+ through trial). However, if you have strong rights and a valuable brand, defending your mark may be necessary. Most disputes settle before trial - 95% of trademark cases never reach verdict.

📝 Sample Response Letters

These templates provide starting points for responding to trademark cease and desist letters.

Response - Asserting Prior Use Rights
Re: Your Cease and Desist Letter Dated [DATE] Dear [Attorney/Sender Name]: We are in receipt of your letter demanding that our client cease use of the [MARK] mark. After careful review, we respectfully decline your demand. [COMPANY NAME] has continuously used the [MARK] mark in connection with [goods/services] since [DATE], which predates your client's claimed first use date of [DATE] and/or registration date of [DATE]. As the senior user, our client has established common law trademark rights that are superior to any rights your client may claim. We possess documentation of our prior use including [invoices, advertisements, business records from DATE]. Furthermore, there is no likelihood of confusion between the parties. Our client operates in the [industry/geographic area] market, serving [customer type], while your client appears to serve [different market]. We reserve all rights and remedies available to us. We suggest that your client review its position before pursuing this matter further. Very truly yours, [YOUR NAME]
Response - Proposing Coexistence
Re: Trademark Coexistence Proposal - [MARK] Dear [Attorney/Sender Name]: We received your cease and desist letter regarding our use of [MARK]. While we believe our use is lawful, we are open to discussing a mutually beneficial resolution. Our companies appear to operate in distinct markets: - Your client: [Their goods/services/geography] - Our client: [Your goods/services/geography] Given these differences, we propose a trademark coexistence agreement that would: 1. Allow both parties to continue using their respective marks 2. Define geographic or product/service boundaries 3. Establish guidelines to prevent consumer confusion 4. Avoid costly litigation for both sides We believe a coexistence arrangement would serve both parties' interests better than litigation. If your client is interested in exploring this option, please contact us to arrange a discussion. We reserve all rights pending resolution of this matter. Sincerely, [YOUR NAME]
Response - Fair Use Defense
Re: Response to Cease and Desist - [MARK] Dear [Attorney/Sender Name]: We have reviewed your demand letter alleging trademark infringement. Your client's claims lack merit because our use constitutes fair use under trademark law. Our use of the term "[TERM]" is descriptive fair use. We use this term to describe [the characteristic/feature/quality] of our [products/services]. We do not use it as a source identifier or trademark, but rather as a descriptive term in its ordinary meaning. Under 15 USC 1115(b)(4) and established case law, fair use of a descriptive term is an absolute defense to trademark infringement. Your client cannot monopolize common descriptive terminology. Additionally, we note that your client's mark is highly descriptive of [what it describes], and thus entitled to only limited protection against non-trademark use. We will continue our lawful descriptive use. Please govern yourself accordingly. Regards, [YOUR NAME]

🚀 Next Steps

After receiving a trademark cease and desist, follow this action plan.

Step 1: Don't Panic

Many C&D letters are aggressive but legally weak. Take time to evaluate before reacting.

Step 2: Research Their Mark

Search USPTO TESS database. Verify registration status, classes, and actual rights claimed.

Step 3: Document Your Use

Gather evidence of your first use date, sales records, advertising, and market presence.

Step 4: Respond Strategically

Send appropriate response before deadline. Don't admit infringement or make promises.

If They File a Lawsuit

  • Federal court - Trademark cases under Lanham Act are federal jurisdiction
  • Answer within 21 days - Failure to respond results in default judgment
  • Assert counterclaims - You may have claims against them for cancellation or declaratory judgment
  • Consider settlement - Most trademark disputes settle before trial

Get Professional Help

Trademark disputes require strategic thinking. Get a professional response and trademark analysis from an experienced attorney.

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Key Legal Resources

  • 15 USC 1051-1141: Lanham Act - Federal trademark law
  • USPTO TESS: Trademark Electronic Search System - Search registered marks
  • TTAB: Trademark Trial and Appeal Board - For cancellation/opposition proceedings
  • Sleekcraft factors: AMF Inc. v. Sleekcraft Boats - Likelihood of confusion analysis