I Received a Trademark Cease and Desist Letter. What Should I Do?

The short answer, expanded

A trademark cease and desist letter is a claim, not a judgment. It is written by an advocate for the other side, and it is written to sound certain. Some are entirely right, and the business that receives one is better off changing its name quickly and quietly. Others overstate the sender's rights, ignore the recipient's priority, or demand far more than a court would order. The first job is to find out which kind of letter this is, and that is a matter of facts the recipient can gather in a week.

What the letter cannot do is bind you to its deadline or to its demands. What it does do is put you on notice. From the date you receive it, continued use is use with knowledge of the claim, which matters later if the claim turns out to be good.

What the letter usually claims and demands

Most trademark letters follow a pattern. They identify the sender's mark, attach or cite a federal registration certificate if one exists, assert that your name or logo is confusingly similar, and demand that you stop using it, destroy or remove materials bearing it, transfer any domain names, sometimes account for your profits, and confirm all of this in writing within ten to thirty days.

Each element is a question. Is the registration real, live and for the goods or services the letter says? Does the sender actually have priority over you? Would a court agree that confusion is likely? Is the demand proportionate to the problem? The answers decide the response.

Step one: check the sender's rights

Start with the registration. The USPTO's public database shows whether the mark is registered or merely applied for, when the application was filed, what goods and services it covers, whether it is on the Principal or Supplemental Register, and whether it has been maintained. Texas state registrations are searchable through the Secretary of State. Unregistered marks can still be enforced under 15 U.S.C. § 1125(a) and Texas common law, but the sender then has to prove ownership and distinctiveness without any presumption.

A federal registration on the Principal Register is, under 15 U.S.C. § 1115(a), prima facie evidence of the mark's validity, the registrant's ownership and its exclusive right to use the mark for the listed goods or services. Prima facie means the presumption can be rebutted with evidence. If the registration has become incontestable under § 1115(b), after five years and the required filing, it becomes conclusive evidence of those things, but the statute still lists defenses, including fraud on the trademark office, abandonment, descriptive fair use and, importantly, prior use by the defendant in its own area.

Also look at scope. A registration for software is not a registration for restaurant services. A registration for a logo is not a registration for the words alone. Letters often describe the registration more broadly than the certificate reads.

Step two: check your own priority

Trademark rights in the United States come from use in commerce, not from registration. If your business was using the name before the sender's first use, or before the sender's federal filing date, you may be the senior user, and the letter has it backwards. Section 1057(c) of title 15 gives a registrant nationwide priority from its filing date, but expressly not against a person who used the mark before that date and has not abandoned it. Section 1115(b)(5) preserves that prior use as a defense even against an incontestable registration, for the area in which it was continuously used before the registrant's filing or publication.

The proof is in your own records: formation documents, the first invoices under the name, the first website capture, signage, advertising receipts, business cards. Gather them before anyone writes back. A recipient who can show continuous use in the Dallas market since before the sender's filing date has a strong position in that market, even if it cannot expand beyond it. Texas law preserves common law rights acquired before a state registration the same way, under section 16.107 of the Business and Commerce Code.

Step three: is confusion really likely?

Even a valid, senior mark is infringed only by a use that is likely to cause confusion about source, sponsorship or affiliation. Courts weigh the strength of the sender's mark, the similarity of the two marks, the similarity of the goods and services, the overlap in customers and channels, the recipient's intent, evidence of actual confusion and the care buyers exercise. The factors are set out in someone is using a name like mine: trademark infringement basics.

Many letters fail here. A shared common word in otherwise different names, for different services, sold to different customers, is not infringement. A descriptive term used in good faith to describe your own services is a defense under § 1115(b)(4). On the other hand, a nearly identical name for the same services in the same city, chosen after the sender was already known, is the kind of case the sender will win, and the sooner the recipient accepts that, the less it costs.

Example

Suppose a Dallas coffee roaster that has sold under the name Harbor Light Coffee since 2019 receives a letter from a Seattle company that registered HARBOR LIGHT for coffee in 2022 and has begun shipping to Texas. The letter demands that the Dallas roaster stop using the name within 14 days. The roaster's records show continuous use in Dallas since its first wholesale invoice in March 2019, three years before the Seattle filing.

The Seattle company holds a valid registration and has nationwide priority from its 2022 filing date, but not against the Dallas roaster in the area where the roaster was already using the name. The roaster's lawyer responds with the dated evidence of prior use, declines the demand, and proposes a coexistence agreement defining each company's territory and channels. The roaster also files its own federal application to establish a constructive use date for any expansion it can still claim. Had the roaster opened in 2024, the analysis would reverse, and a prompt, negotiated rebrand would be the sensible outcome.

The four responses, and when each fits

• Comply and rebrand. Right when the sender is senior, the marks are close and the services overlap. A negotiated transition period, a mutual release and an agreement that the sender will not pursue past damages are the usual terms. Rebranding early, before the name has deep equity, is far cheaper than rebranding after a judgment.
• Negotiate coexistence. Right when both sides have legitimate rights in different territories, channels or product lines. A coexistence agreement defines who uses what where, often with minor changes to logos or taglines to reduce confusion. Many letters end here.
• Push back. Right when the recipient is senior, the sender's mark is weak or descriptive, or confusion is unlikely. The response lays out the facts and the law and invites the sender to withdraw. It should be measured; a letter that overreaches in the other direction is a poor start to a negotiation.
• File first. When litigation seems inevitable, the recipient can file a declaratory judgment action under 28 U.S.C. § 2201 asking a court to declare that it does not infringe. This chooses the forum, often the recipient's home court in the Northern District of Texas, instead of waiting to be sued elsewhere.

Ignoring the letter is not on the list. It does not make the claim go away, it removes the chance to shape the outcome, and it converts any later finding of infringement into one made with knowledge, which bears on enhanced damages and fees under 15 U.S.C. § 1117 and on the treble damages and fee award available for knowing or bad-faith infringement under section 16.104 of the Texas Act. The general consequences of silence are covered in what happens if I ignore a demand letter.

The deadline in the letter

The ten or fourteen days in the letter is the sender's deadline, not a legal one. Nothing happens automatically when it passes. What a court will later care about is whether the recipient responded within a reasonable time and in good faith. A short note from counsel acknowledging the letter, stating that the recipient is investigating and will respond substantively by a stated date, is routine and almost always accepted. Why these deadlines carry less weight than they appear to is covered in the demand letter gives me 10 days: is that deadline real.

Three things to do this week

1. Preserve your records and stop deleting. Old websites, invoices, marketing files and social media history are the proof of your first use. Nothing should be removed from the website or social accounts in a way that destroys the history of what was used and when.
2. Notify your insurer. Many commercial general liability policies include advertising injury coverage that can respond to trademark claims, and policies require prompt notice. Whether yours does is a question for the policy, discussed in will my business insurance cover this lawsuit.
3. Do not reply yourself, and do not call the sender. An owner's email explaining that the name was chosen innocently, or that the business is small and local, can concede points the lawyer would have contested. Everything said becomes part of the record.

What drives the cost of this decision

The cost of a trademark dispute is driven by the stage it reaches: a letter exchange, a negotiated agreement, a preliminary injunction fight, or full litigation with discovery and survey experts. Against that stands the cost of rebranding, which depends on how much equity the name has, how many places it appears, and whether customers find the business by name. A recipient with a weak position and a young brand usually spends less by changing now. A recipient with priority and a well-known local name usually spends less by defending it. The analysis is specific to the business and is worth doing before the first response is sent.

Tina Wysk represents Dallas businesses that have received trademark demands and businesses that send them, in negotiation and in state and federal court; the practice is described at intellectual property disputes.