I Received a Cease and Desist Letter—Now What?

DEREK FAHEY, ESQ.

A trademark cease-and-desist letter alleges that a business is infringing another party’s trademark or service mark and demands that the challenged use stop. The letter should be taken seriously, but it does not automatically establish that infringement has occurred.

Option 1: Respond to The Letter

An infringement analysis may show that no likelihood of confusion exists. Marks that look alike can sometimes coexist when they cover unrelated goods or services, move through different trade channels, or are purchased under different conditions. Earlier use may also create rights even when the other party owns a federal registration.

Option 2: Request Additional Information

The letter may not contain enough facts to evaluate the claim. A response can request details about ownership, registration, first use, geographic scope, the accused conduct, and the legal basis for the demand.

Option 3: Do Nothing

Some letters are intended primarily to pressure the recipient. In limited circumstances, non-response may be appropriate. That decision should be made cautiously because ignoring a legitimate claim can increase litigation risk and may later be characterized as reckless conduct.

Option 4: Negotiate

The parties may be able to reach a coexistence agreement, phase-out arrangement, license, geographic limitation, or other negotiated resolution. Counsel can help identify leverage and ensure that the agreement addresses the practical business issues created by the dispute.

Option 5: File a Lawsuit

A party that believes its use is lawful may seek a declaratory judgment of non-infringement. Litigation is expensive, but it may be justified when substantial brand value, investment, or future revenue depends on continued use of the mark.

The appropriate response depends on the strength of the asserted rights, priority of use, similarity of the marks and goods, business value of the challenged branding, and the cost of changing course.