What this checklist is for. A cease-and-desist (C&D) letter is the legal equivalent of a firm tap on the shoulder. Done well it stops a problem cold; done badly it invites a lawsuit you never wanted or turns a sleepy dispute into a trending hashtag with your client cast as the villain. That gap is almost entirely a function of drafting and judgment. This checklist operationalizes Drafting a trademark cease-and-desist letter and Trademark cease-and-desist letters: sending and responding. Never send one you have not earned the right to send. Educational, not legal advice.

Phase 1 — Clear your own rights before you accuse anyone (Step Zero)

  • Confirm priority — investigate whether the recipient may have used the mark first (Wayback Machine, press, business registrations, prior USPTO filings). A senior common-law user can defeat a junior registrant in its territory. See Trademark rights under common law.
  • Confirm the scope of your rights — the actual goods/services and geography you use the mark on. Pull your registration and read the identification as written; do not oversell.
  • Confirm registration status in TSDR — is it live (Section 8/9 filed), and is it incontestable (Section 15)? Citing a dead registration is the kind of error that gets a letter posted online with mocking annotations.
  • Assess the mark's strength on the distinctiveness spectrum (Abercrombie) — the weaker the mark, the more cautious the letter.
  • Honestly assess likelihood of confusion under the circuit factors (Polaroid / Sleekcraft / DuPont) before writing. See Trademark likelihood of confusion analysis checklist.
  • Assert dilution or cybersquatting only if they truly apply — fame under § 1125(c)(2)(A) is a high bar; ACPA/§ 1125(d) needs a bad-faith domain.
  • Anticipate defenses — descriptive and nominative fair use, laches, acquiescence, abandonment, and validity attacks.

Why this matters. The single most common mistake in enforcement is firing off a letter before confirming your rights are as strong as you believe. Overstating rights undermines credibility and can hand the recipient a defense or counterclaim — including fee-shifting under the Octane Fitness "exceptional case" standard, which runs both ways. Think of this as running a trademark clearance search in reverse.

Phase 2 — Decide whether to send a letter at all

  • Define the outcome you want: a quiet stop, damages/accounting, coexistence, or a litigation-notice record.
  • Consider filing suit first instead when your claim is weak (a letter advertises weakness), when you face declaratory-judgment exposure in a bad forum, or when surprise matters (counterfeiting, evidence destruction; ex parte seizure under 15 U.S.C. § 1116(d)).

Why this matters. "We always send a letter first" is a habit, not a strategy. The decision to send is itself strategic.

Phase 3 — Build the letter, section by section

  • Letterhead, addressee, re-line — address a specific decision-maker, not "To Whom It May Concern"; choose delivery (email + certified mail) for urgency and a clean record.
  • Identify yourself and your rights — the mark, the goods/services, duration and renown, and registration number(s) (and incontestability only if perfected).
  • Identify the infringing use specifically — exact designation, goods/services, where, and since when; attach properly captured evidence. See Authenticating website evidence checklist and Capturing the web.
  • Explain why the use is unlawful — likely confusion under § 32 (15 U.S.C. § 1114(1)) for registered marks and/or § 43(a) (15 U.S.C. § 1125(a)) for unregistered ones; add a short plain-English explanation of the two or three strongest factors. Allege willfulness only if facts support it.
  • State demands clearly and proportionately — cease use, destroy infringing materials, abandon/cancel applications or registrations, transfer/cancel domains, and confirm compliance in writing. Tailor to your goal.
  • Set a firm, reasonable deadline — a specific calendar date (often 10–30 days), long enough for a small business to consult counsel and unwind use.
  • Describe consequences carefully — firm but measured; an unequivocal, imminent threat of suit is exactly what lets the recipient race to court (see Phase 5).
  • Reserve your rights — a clause preserving all legal and equitable rights and remedies.
  • Sign appropriately (attorney vs. executive is a tone choice); consider an FRE 408 "settlement" label deliberately.

Why this matters. A letter that complains without demanding is just a complaint; a letter that demands the impossible looks like bullying and hardens the dispute. The most effective demands are ones the recipient can realistically satisfy — which is why a reasonable transition period so often unlocks a quiet resolution.

Phase 4 — Match threats to real remedies and set the tone

  • Confirm the remedies you threaten are what the Lanham Act actually provides: injunctive relief (§ 1116), the defendant's profits, your actual damages, and costs (§ 1117(a)); attorney's fees in "exceptional" cases; treble/statutory damages reserved for willful counterfeiting.
  • Note that after Romag (2020), willfulness is not a strict precondition to disgorging profits — but it does not turn every dispute into a treble-damages case.
  • Calibrate tone: conciliatory when the infringement looks innocent or the recipient is small/sympathetic; assertive when it is blatant, willful, or the recipient is sophisticated.
  • Do not make threats you are not prepared to back up (an ethics floor), and be careful about copying third parties (defamation / tortious-interference / § 43(a) exposure).

Why this matters. A threat is only as credible as the relief behind it. Empty maximalist threats are both less credible and more dangerous than a sober description of what you will actually seek — fee-shifting can land on the sender of a baseless campaign.

Phase 5 — Manage the two great hazards

  • Declaratory-judgment jeopardy: the more specific, unequivocal, and imminent your threat, the easier you make it for the recipient to establish an "actual controversy" under MedImmune (2007) and sue you first in a forum of its choosing. Keep threats general; do not name a court and a filing date unless you want to litigate.
  • First-to-file race: a sophisticated recipient may file a declaratory action the same afternoon — if you genuinely fear the race, file first.
  • Lower-risk postures: object only to a USPTO application (and state intent to file a TTAB opposition), keep demands conditional, and open with settlement.
  • Trademark bullying / Streisand effect: assume the letter may be published (e.g., the Lumen database). Have a real claim, be proportionate, be human in tone, and pick your battles.

Why this matters. Aggression has a price: the more you threaten, the more you invite the recipient to drag you into court on its terms — or to make you the villain online. For the mirror image, see Responding to a trademark cease-and-desist letter checklist.

Phase 6 — After you send it

  • If the recipient complies, get it in writing, verify the use stopped, and consider a short release + covenant; then monitor for relapse.
  • If the recipient proposes a compromise, consider a coexistence or consent agreement carving out goods, channels, or territory.
  • If the recipient denies, take the response seriously — it may reveal your claim was weaker than assessed.
  • If the recipient ignores you, treat escalation as a deliberate cost-benefit decision, not a reflex.
  • Keep meticulous records throughout (the letter, proof of delivery, dated screenshots, all correspondence).

Why this matters. A C&D is the opening move, not the whole game. Continued infringement after clear notice strengthens a later willfulness argument; a documented resolution makes any relapse easy to address.

Common mistakes

  • Sending before clearing your own rights (priority, scope, registration status).
  • Overstating rights or citing a dead registration.
  • Asserting dilution/cybersquatting that does not fit.
  • Threatening treble damages against an honest-mistake hobbyist.
  • A specific, imminent threat that hands the recipient declaratory-judgment jurisdiction.
  • Copying the recipient's customers or app stores on the accusation.

Primary authority

  • Statutes: 15 U.S.C. §§ 1114 (§ 32), 1125(a) (§ 43(a)), 1125(c) (dilution), 1125(d) (ACPA), 1116 (injunctions; ex parte seizure), 1117 (remedies); 28 U.S.C. § 2201 (Declaratory Judgment Act).
  • Cases: MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007); SanDisk Corp. v. STMicroelectronics, Inc., 480 F.3d 1372 (Fed. Cir. 2007); Wilton v. Seven Falls Co., 515 U.S. 277 (1995); Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020); Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014).

Related resources

This checklist is educational and not legal advice. Trademark disputes are fact-specific; consult a qualified trademark attorney before sending any cease-and-desist letter.