Cease and Desist Letter — Trademark Infringement

A Cease and Desist Letter — Trademark Infringement in the United States gives formal notice of the sender's position or demand and the action required of the recipient.

Trademark rights in the United States arise through two channels. First, common law trademark rights are created through actual use of a mark in commerce — the first party to use a distinctive mark in a geographic market acquires priority in that market without any registration. Second, federal trademark registration with the United States Patent and Trademark Office (USPTO) under the Lanham Act provides additional rights, including constructive notice to the public, a legal presumption of ownership and validity, and the right to use the registered trademark symbol (®). An incontestable registration under 15 U.S.C. § 1065, achieved after five years of continuous use, provides an even stronger evidentiary advantage in litigation.

The legal standard for trademark infringement under the Lanham Act is whether the defendant's use of a mark creates a likelihood of confusion with the plaintiff's mark as to the source, sponsorship, affiliation, or approval of goods or services. Courts apply a multi-factor likelihood of confusion test — the specific factors vary by circuit, but generally include the similarity of the marks, the relatedness of the goods or services, the strength of the plaintiff's mark, evidence of actual consumer confusion, the channels of trade and advertising, and the sophistication of consumers in the relevant market. The Ninth Circuit applies the Sleekcraft factors from AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), while the Second Circuit applies the Polaroid factors from Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961).

A trademark cease and desist letter differs from a DMCA takedown notice (which addresses copyright infringement) and from other intellectual property demand letters. It is specifically tailored to trademark law claims and should reference the trademark owner's registration number (if registered), the relevant goods or services classes in the USPTO registration, and the specific infringing uses being objected to. The letter creates an official record of the trademark owner's objection, which is important for several purposes: it documents the owner's diligence in policing the mark (relevant to prevent abandonment claims), it may toll statutes of limitations for some claims, and it establishes the infringer's awareness of the trademark owner's rights, which is relevant to whether the infringement was willful.

The Trademark Modernization Act of 2020 amended the Lanham Act to restore the presumption that a trademark owner seeking an injunction is entitled to a presumption of irreparable harm upon a finding of likelihood of confusion, reversing contrary circuit court precedents that had required proof of actual harm. This makes preliminary injunctions more accessible for trademark owners who file suit after an ignored cease and desist letter, strengthening the deterrent value of trademark enforcement letters.

A Trademark Cease and Desist Letter is needed whenever a trademark owner discovers unauthorized use of their mark or a confusingly similar mark by another party in commerce. The letter is typically sent before filing litigation to give the infringer an opportunity to comply voluntarily, which saves the trademark owner the time and expense of a federal lawsuit.

A cease and desist letter is appropriate when a competitor is using a business name, logo, or slogan that is identical or confusingly similar to your registered or common law trademark in connection with competing or related goods or services. Even modest resemblance — in appearance, sound, or commercial impression — can support an infringement claim if consumer confusion is likely, as courts look at the overall commercial impression rather than side-by-side comparison.

Online sellers, e-commerce businesses, and social media influencers frequently need trademark cease and desist letters when third parties register domain names incorporating their mark (cybersquatting), create social media handles that impersonate their brand, or list counterfeit products on Amazon, Etsy, or Shopify. The cease and desist letter typically accompanies or precedes a complaint through these platforms' brand protection programs, such as Amazon's Brand Registry, which requires a registered trademark for enrollment.

Service businesses — law firms, consulting companies, technology services — need cease and desist letters when a new entrant in their market adopts a name or logo that copies their established brand identity. The likelihood of confusion analysis is typically most favorable to the trademark owner when both companies operate in the same metropolitan area or compete nationally in the same industry.

Licensors and franchisors need cease and desist letters when a licensee exceeds the scope of their license — for example, using the licensed mark in unauthorized territories, on unauthorized product categories, or after the license has expired. In these cases the letter also serves as notice of breach of the license agreement.

Franchisor enforcement programs routinely deploy cease and desist letters when former franchisees continue using franchise marks after termination of the franchise agreement, which is one of the most common sources of post-termination trademark disputes under Lanham Act § 1114.

A Trademark Cease and Desist Letter must contain several key components to be legally effective and to maximize the likelihood that the recipient will comply.

The identification of the trademark owner and the mark at issue is the foundation of the letter. The owner's full legal name, address, and contact information should be stated. The mark should be identified precisely — including the exact wording of a word mark, or a description of a design mark, together with the USPTO registration number and registration date if the mark is federally registered. The specific goods or services classes covered by the registration (from the USPTO International Classification system) should be listed.

The description of infringing use section identifies with specificity what the recipient is doing wrong. The letter should identify the infringing mark, the goods or services in connection with which it is used, the specific channels where the infringement occurs (company website URL, social media handles, physical store locations, product packaging), and the date the trademark owner first became aware of the infringement. Where possible, attach screenshots, photographs, or other evidence of the infringing use as exhibits.

The legal basis section explains why the use constitutes infringement — specifically, the likelihood of confusion between the plaintiff's mark and the defendant's use. Referencing 15 U.S.C. § 1114 for a registered mark or 15 U.S.C. § 1125(a) for an unregistered mark or trade dress claim establishes the legal framework. For state law claims, the applicable state trademark or unfair competition statute should also be cited.

The demands section states precisely what the trademark owner requires: (1) immediate cessation of all use of the infringing mark in any form; (2) destruction or recall of all materials bearing the infringing mark, including signage, packaging, marketing materials, and digital assets; (3) transfer of any infringing domain names to the trademark owner; (4) discontinuation of any trademark applications pending at the USPTO for the infringing mark; and (5) written confirmation of compliance by a specified deadline, typically 10 to 14 days from the date of the letter.

The remedies warning section describes the consequences of non-compliance. Available remedies under the Lanham Act include preliminary and permanent injunctions; disgorgement of the infringer's profits; the trademark owner's actual damages; enhanced damages of up to three times actual damages for willful infringement under 15 U.S.C. § 1117; statutory damages for counterfeiting of $1,000 to $200,000 per mark per type of goods under 15 U.S.C. § 1117(c) (up to $2,000,000 for willful counterfeiting); and attorney's fees in exceptional cases under 15 U.S.C. § 1117(a). The Trademark Modernization Act of 2020 also restored the presumption of irreparable harm for injunctive relief purposes.

The reservation of rights clause states that the letter is not a complete statement of the trademark owner's rights or remedies, and that sending the letter does not waive any claims or defenses available to the trademark owner. A response deadline and the consequences of non-response should be clearly stated.