Cease and Desist Letter Response
(Trademark Infringement)

Summary

This template is a response to a trademark cease and desist letter. It may be used as a starting point in drafting a response to a cease and desist letter accusing the recipient of trademark infringement. This template includes practical guidance, drafting notes, alternate clauses, and optional clauses. This template may be adapted as appropriate depending on whether the issue is trademark infringement, trade dress infringement, dilution, counterfeiting, etc., and on the defenses that are available (e.g., fair use, trademark invalidity, priority, lack of ownership of the asserted mark, noninfringement based on lack of likelihood of confusion). For more on these causes of action and potential defenses, see Trademark Infringement and False Designation of Origin Claims, Remedies, and Defenses, Trade Dress Fundamentals, Trademark Dilution Claims, Remedies, and Defenses, and Anti-counterfeiting Strategies and Counterfeiting Claims. Where the issue is trademark infringement, factors to be considered when drafting the response include similarity of the marks, similarity or relatedness of the goods/services, overlap in trade and advertising channels, sophistication of customers and the nature and context of purchasing decisions, any evidence of actual confusion or its absence after a significant period of concurrent use, strength or weakness of the senior asserted mark (inherent or acquired distinctiveness), the nature and extent of use of similar marks by third parties, and/or any evidence of intent to deceive. For an overview of the exact factors used in each circuit, see Likelihood of Confusion Factors Circuit-by-Circuit Chart. For more on likelihood of confusion generally, see Likelihood of Confusion Resource Kit. For a more detailed discussion on response letters, see Cease and Desist Letters in Trademark Disputes: Responding to the Letter. For additional resources on trademark enforcement, see Trademark Enforcement Resource Kit. For guidance on managing an intellectual property (IP) portfolio, see In-House Intellectual Property & Technology Resource Kit.