Receiving a trademark infringement cease and desist letter can be stressful and confusing. One way to reduce the stress and confusion is to understand how to best respond to a trademark cease and desist letter. As always, you should consult with an attorney if you receive a trademark cease and desist letter, but this post is intended to provide you with some insight into how attorneys analyze these issues.

1. Identify the relevant parties. Who sent the trademark cease and desist letter? Were you aware of the complaining party prior to receiving the cease and desist letter? Have you received any prior correspondence from this party?
2. Collect all correspondence and evidence. If you received prior correspondence concerning this issue, collect and save that correspondence within a central location. Additionally, collect all relevant information concerning the complaining party’s trademark rights. If the complaining party owns a registered trademark, examine the US Patent and Trademark Office’s prosecution history.
3. Identify priority dates. Did the complaining party use this trademark prior to you? If so, note the date. Also, note the filing and registration dates of the complaining party’s trademark registration.
4. Identify the goods and services. Trademark rights are intended to protect against a likelihood of consumer confusion. If the complaining party uses the mark in association with entirely unrelated goods or services, trademark infringement is less likely.
5. Identify potential defenses. Are you currently using the trademark in a descriptive or generic manner? Are you using the trademark for parody purposes? If so, identify these defenses and collect evidence to support them.
6. Hire an attorney to draft a response to the trademark infringement cease and desist letter. A trademark attorney that is familiar with the most recent case law will identify the appropriate defenses, advise you on your risks, and draft a response letter based on his or her analysis.
7. Consider filing for trademark registration. If you do not face risk, a trademark lawyer may advise you to file for your own trademark registration to preserve your rights in the future.

These are simply some general considerations when responding to a trademark infringement cease and desist letter. Trademark infringement carries heavy penalties: up to $2 million in statutory damages plus costs and attorneys fees. Consequently, it is important to contact a trademark attorney as soon as possible if you have received a trademark infringement cease and desist letter.

A Deeper Analysis: How Attorneys Evaluate Trademark Infringement Claims

The seven-step response framework described above provides a practical starting point, but experienced trademark attorneys go deeper in evaluating a cease and desist demand. Here is a more detailed look at the key analytical frameworks that determine whether the claim has merit and what your response strategy should be.

The Likelihood of Confusion Analysis

Trademark infringement under 15 U.S.C. § 1114 requires proof that the defendant’s use of a mark is “likely to cause confusion, or to cause mistake, or to deceive” consumers as to the source, sponsorship, or affiliation of the goods or services. Courts apply the multi-factor likelihood-of-confusion test from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The key factors are:

• Similarity of the marks. Are the marks similar in appearance, sound, connotation, and commercial impression? Courts evaluate marks in their entireties, not component by component.
• Relatedness of the goods and services. Do the parties’ goods and services compete, overlap, or move through the same channels of trade? The more related the products, the higher the likelihood of confusion.
• Strength of the prior mark. Strong, distinctive marks (arbitrary or fanciful marks) receive broader protection than weak, descriptive marks.
• Evidence of actual confusion. Have consumers actually been confused? This is the most probative evidence of likelihood of confusion, though it is not required.
• Sophistication of the purchasers. Sophisticated commercial buyers exercise more care in purchasing than ordinary consumers, reducing the likelihood of confusion.

Priority: Who Was First?

Trademark rights in the United States are acquired by use in commerce, not by registration. A party who has been using a mark in commerce since before the complaining party first used the mark — or first filed an application — may have superior common-law rights. If your use of the mark predates the complainant’s use and registration, you have a strong defense.

Priority analysis requires gathering evidence of your earliest use of the mark in commerce: dated invoices, advertisements, website screenshots, social media posts, and other materials that establish when you first used the mark. First use in a limited geographic area creates rights in that area but not nationally; a federally registered mark has nationwide priority from its filing date.

Fair Use and Descriptive Use Defenses

The Lanham Act’s “fair use” defense under 15 U.S.C. § 1115(b)(4) protects uses of a term in its descriptive sense rather than as a trademark. For example, a printer manufacturer who uses the term “LASER” to describe its laser printers is using the word descriptively, not as a trademark. Similarly, a comparative advertising use — “Our product is better than BRAND X” — is protected as a nominative fair use. These defenses do not apply to all situations, but they can be dispositive when the facts support them.

When to File Your Own Trademark Registration

One of the most underutilized responses to a trademark cease and desist letter is filing for trademark registration of your own mark — if the analysis supports it. If the likelihood-of-confusion analysis demonstrates that the complainant’s mark and yours are sufficiently dissimilar, filing your own application locks in a priority date and creates a public record of your rights. If the application succeeds, it provides a registered trademark that can be enforced against future infringers and used as leverage in disputes with the complainant.

This strategy is not appropriate in every case — if the complainant’s mark has genuine priority and the marks are confusingly similar, filing an application wastes resources and will likely result in an opposition. A trademark attorney’s priority analysis determines whether this strategy is viable.

If you have questions about trademark registration, enforcement, or responding to a trademark cease and desist, contact the trademark attorneys at Revision Legal. Call us at 855-473-8474 or complete our contact form.