What this checklist is for. A cease-and-desist (C&D) letter is alarming, but it is the opening move in a negotiation, not the end of your business — and on its own it carries no more legal force than a strongly worded email. The central paradox: neither panic nor ignore it. Folding instantly surrenders rights you never had to give up; firing back a furious denial can hand the sender a roadmap to sue. This checklist is the antidote to both panic and paralysis. It operationalizes Responding to a trademark cease-and-desist letter and Trademark cease-and-desist letters: sending and responding. Educational, not legal advice.

Phase 1 — The first 72 hours

  • If bringing in counsel, run a conflicts check and sign a retainer before the lawyer absorbs the other side's confidences.
  • Do not send an immediate, emotional, substantive reply — no "explaining everything" call, no text to the founder. If you must acknowledge, keep it to one neutral line that the letter is received and under review.
  • Check whether you have actually been sued — search PACER and relevant state dockets. A real lawsuit carries a real clock (typically 21 days to answer under Fed. R. Civ. P. 12); the letter's deadline is the sender's invention.
  • Consider a holding letter (lawyer to lawyer) stating the claims are under investigation and a substantive response will follow — it resets the arbitrary deadline to something realistic.
  • Consider an information request asking the sender to substantiate its use (samples, duration, geography, sales/advertising figures) — buys time and shifts the burden back.
  • Loop in your insurer — many CGL policies include "personal and advertising injury" (Coverage B); notice deadlines are strict and the duty to defend is broad, so tender early.
  • Issue a litigation hold — once a dispute is reasonably anticipated, the duty to preserve evidence attaches; do not let anyone "clean up" design files, emails, or sales data.
  • Budget the fight honestly — a representation letter is cheap; a survey can run into the tens of thousands; full litigation, six or seven figures.

Why this matters. These unglamorous steps prevent the two worst outcomes: missing a real deadline and saying something you cannot take back. Silence is its own trap — it can later be offered as evidence of willful infringement, multiplying exposure and inviting a fee award (15 U.S.C. § 1117(a)).

Phase 2 — Decode the letter

  • Identify the marks at issue precisely — word mark, stylized/design mark, or trade dress (scope differs enormously).
  • Identify the claims: registered-mark infringement (§ 32 / § 1114), unregistered / § 43(a), dilution (§ 43(c), famous marks only), cyberpiracy (§ 43(d)), counterfeiting, and any contract claim (license/franchise/settlement).
  • Catalog every demand (stop, accounting, money, recall/destroy, abandon applications, cancel registrations, transfer domains).
  • Read the tone as intelligence — strident with a 48-hour fuse vs. measured with a soft deadline signals how serious (or bluffing) the sender is.

Why this matters. A good response is built on precise understanding of what the sender owns, what it must prove, and what it actually wants. Most everyday disputes reduce to one question: is consumer confusion likely?

Phase 3 — Size up the sender and yourself

  • Investigate the sender and its lawyer — size, enforcement history (PACER, TTABVUE), and whether the signer is a trademark specialist or a generalist dabbling.
  • Investigate the sender's mark in TSDR: is the registration live (Section 8/9 filed) and owned by the sender? Check the chain of title and whether it is incontestable (Section 15).
  • Pull the prosecution history — prior narrowing amendments, disclaimers, or "our goods are unrelated" arguments can be turned against today's broad claims.
  • Look for the sender's prior coexistence/consent agreements — if it tolerated another similar mark, it will struggle to explain why yours is intolerable.
  • Investigate your own position — your dates and territory of first use (priority can be the whole ballgame), your own registrations, specimens, whether you cleared the mark, and any actual confusion evidence.

Why this matters. The party with the better answer to "who used what, where, and first" usually controls the negotiation. A "dead" registration is a paper tiger; a clean clearance search is powerful evidence you did not willfully infringe — see The shield of good faith. Route all contact through counsel — the no-contact rule bars reaching a represented party.

Phase 4 — Run the confusion analysis honestly

Why this matters. If confusion is genuinely likely (same product, similar names, overlapping customers, you knew about them), a defiant "see you in court" reply is reckless. If it is unlikely (different products, weak mark, years of coexistence), you can respond with confidence.

Phase 5 — Inventory your defenses

  • Descriptive ("classic") fair use (15 U.S.C. § 1115(b)(4)) — using a word in its ordinary descriptive sense; the plaintiff still carries the confusion burden (KP Permanent).
  • Nominative fair use — using the mark to refer to the sender's actual product (New Kids on the Block, 971 F.2d 302); note the circuit split on framing.
  • No likelihood of confusion — often the strongest card.
  • Invalidity / abandonment — descriptive without secondary meaning, generic, functional, or abandoned (3 years' nonuse is prima facie; naked licensing) — even an incontestable mark falls to genericness, functionality, abandonment, or fraud.
  • Equitable defenses — laches, acquiescence, estoppel (see Understanding equitable defenses).
  • First Amendment / expressive use — narrowed after Jack Daniel's (2023) when the mark is used as a source identifier.

Why this matters. Knowing which defenses apply transforms your response from a plea into an argument. Incontestability (Park 'N Fly, 469 U.S. 189) forecloses the "merely descriptive" attack but is not a force field.

Phase 6 — Choose your response from the menu

  • Comply and rebrand — smart when the claim is strong and you have little goodwill; negotiate a sell-off period, limited scope, transition payment, and a clean release.
  • Deny liability (and explain why) — establish that any concession is a business accommodation, not an admission; attach exhibits (crowded-field registrations, prosecution-history excerpts, priority/coexistence proof).
  • Negotiate coexistence/consent — house mark, modified styling, or staying in defined lanes.
  • License or buy peace — a royalty (with quality control) or, rarely, purchasing the sender's rights.
  • Hold firm and defend — if the claim is weak and your position strong; be prepared for the sender to call the bluff.
  • Go on offense — preemptive declaratory judgment — sue first to pick the forum, where an "actual controversy" exists under MedImmune (549 U.S. 118); or file a TTAB cancellation/opposition.
  • Never simply ignore it — even a firm, reasoned letter declining the demands beats silence.

Why this matters. There is no single "right" response; match it to the merits and the business stakes. Calibrate tone to the audience — patiently laying out basic doctrine for a generalist can be quietly devastating; always include a reservation of rights and an FRE 408 designation for compromise discussions.

Phase 7 — Avoid the landmines

  • No careless admissions — never concede you "knew about" the sender, "meant to evoke" their style, or are "probably" infringing.
  • No overreach that triggers a suit — a taunting reply or a DJ threat can convert a vague letter into the controversy the sender needs, or push it to race to its own courthouse.
  • Read any prior contracts first — a license/franchise/settlement may dictate arbitration, forum, choice of law, or fee-shifting.
  • Preserve evidence — spoliation sanctions can be worse than the underlying claim.

Why this matters. The most damaging sentences in any response are the ones conceding facts you did not have to concede. Confidence reads better than aggression.

Common mistakes

  • Panicking and folding, or ignoring the letter entirely.
  • An off-the-cuff emotional reply with admissions.
  • Failing to check PACER for an already-filed suit.
  • Missing the insurer notice deadline.
  • Skipping the prosecution history, the sender's best self-contradiction.
  • Triggering a declaratory-judgment race with a needlessly aggressive reply.

Primary authority

  • Statutes: 15 U.S.C. §§ 1114, 1115(b) (incl. (b)(4) fair use), 1117(a), 1125(a)/(c)/(d), 1127 (abandonment); 28 U.S.C. §§ 2201–2202.
  • Cases: KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004); New Kids on the Block v. News America Publishing, 971 F.2d 302 (9th Cir. 1992); Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985); MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007); Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023).

Related resources

This checklist is educational and not legal advice. Trademark disputes turn on specific facts and circuit law; consult a qualified trademark attorney before responding to a cease-and-desist letter.