Trademark Cease-and-Desist Letter — Template

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This template supplies a complete, sendable trademark cease-and-desist letter with every variable bracketed, plus the reasoning behind each paragraph and the alternative language that makes it fit the matter in front of you. It opens with the decision that comes before drafting — when a demand letter is the right instrument, when a phone call or a platform complaint is better, and the three situations in which sending anything at all is malpractice-adjacent. It then lists the facts, dates, registration numbers, and exhibits you need in hand, sets out the model letter as a real letter with a caption, a factual recitation, numbered demands, and a hard deadline, and follows with clause-by-clause notes tying each paragraph to the authority that justifies it, including the actual-notice rule of 15 U.S.C. § 1111 and the declaratory judgment exposure created by MedImmune. Alternative and optional clauses cover the aggressive version, the conciliatory version, the common-law-only version, dilution, cybersquatting, former licensees, and keyword advertising. Sending mechanics address delivery method, the represented-party problem, proof of transmission, and everything that goes on the docket the day the letter goes out. A running example — a Vermont toolmaker, an Arizona reseller, and a hobbyist on Etsy — shows how the same facts produce three different letters.

IP and Technology > Trademarks | Form | Published 15 January 2026 - Updated 30 July 2026 | Casey Scott McKay - marksy.us

Summary. A complete, sendable trademark demand letter with every variable bracketed, and the reasoning behind every paragraph. Start with the decision that precedes drafting: whether a letter is the right instrument at all, and the three cases where sending one is worse than doing nothing. Then the intake list — facts, dates, registration numbers, exhibits. Then the model letter itself, written as a letter, with a caption, a factual recitation, numbered demands, and a deadline. Then clause-by-clause notes tying each paragraph to authority, including the actual-notice rule of 15 U.S.C. § 1111 and the declaratory judgment exposure MedImmune created. Then alternatives: the aggressive version, the conciliatory version, common-law-only, dilution, cybersquatting, former licensees, keyword ads. Then delivery, proof, and what goes on the docket the day it goes out.

Keywords: cease and desist letter · trademark demand letter · lanham act section 32 · section 43(a) false designation of origin · actual notice under 15 usc 1111 · declaratory judgment risk · medimmune all the circumstances test · willfulness and enhanced profits · phase-out and sell-off period · covenant not to sue · express abandonment of application · surrender of registration for cancellation · domain name transfer demand · litigation hold letter · tone calibration · trademark bullying · compliance deadline · proof of delivery · laches and acquiescence · settlement agreement and release

What this template is, when to use it, and when not to

This is a professional cease-and-desist letter for trademark infringement — the instrument a mark owner sends before it sues, and often instead of suing. Most trademark disputes in the United States end with a letter like this one. They never reach a docket, a deposition, or a judgment; they end because somebody wrote a paragraph that made continued use look more expensive than a rebrand.

That is the whole design objective. The letter has to be accurate enough that a defense lawyer reading it concludes the sender did the work, specific enough that the recipient cannot pretend to misunderstand, and calibrated enough that it does not hand the recipient a declaratory judgment action in a district you would never have chosen.

The strategy behind the instrument — timing, escalation, and what to do when the letter is ignored — is in Sending an Effective Cease-and-Desist Letter. The pre-flight diligence is in the Pre-Litigation Enforcement Checklist. This document is the paper.

Use this template when the recipient is using a confusingly similar designation on related goods or services, your rights are prior and provable, and you would actually be willing to file if ignored. It adapts cleanly to a registered mark, an incontestable registration, a common-law-only mark, a dilution claim, a domain name, and a former licensee holding over.

Do not use it — use something else — when:

| Situation | Why a letter is the wrong move | Instead | |---|---|---| | Counterfeiting with seizable inventory | A letter tips off the target. Ex parte seizure under 15 U.S.C. § 1116(d) requires a showing that the defendant would destroy, move, or hide the goods — a warning makes that showing far harder | Seizure application or border enforcement; see Trademark Counterfeiting and the Anticounterfeiting Program Checklist | | A listing on Amazon, Etsy, eBay, or a social platform | The platform removes it in days for free; a letter to the seller takes weeks and costs money | Brand-registry complaint; escalate only repeat sellers. See the Online Brand Protection Toolkit | | A domain held by an anonymous registrant with no other business | A letter to a privacy-shielded registrant produces a price quote, nothing else | UDRP — see UDRP vs. Federal Lawsuit and the UDRP Complaint — Template | | A pending application with no marketplace use yet | Nothing to enjoin; the letter only creates a paper trail the applicant can use | Extend under 37 C.F.R. § 2.102, then oppose. See How to File a Notice of Opposition | | Keyword bidding on your mark, ad copy clean | The bid alone is generally lawful; a broad demand invites both a DJ action and an antitrust problem | Narrow to ad copy and landing pages. See the Keyword Advertising Compliance and Enforcement Checklist | | Expressive use — parody, film, song title, commentary | The fight is about the First Amendment, not confusion, and the letter will be published | See the Expressive Use and Parody Risk Checklist first | | You need relief this week | A 14-day deadline burns the two weeks in which irreparable harm accrues | File and move; see Moving for a TRO or Preliminary Injunction |

The three-question gate. Before you draft: (1) Are our rights senior in this territory and for these goods? (2) Would we file if ignored? (3) Can we survive a declaratory judgment action in the recipient's home district? Two yeses and a shrug is not enough. A "no" on any of the three means the letter changes shape or does not go.

The worked example used throughout. Calderwood Tools, Inc. is a Vermont maker of hand planes and chisels, founded 2009, roughly $11 million in annual revenue, owner of U.S. Reg. No. 5,884,102 for CALDERWOOD in Class 8 (registered 12 November 2019, § 15 affidavit accepted March 2025, so the registration is incontestable). In April 2026 its watch service flagged Calderwood Supply Co. LLC, a Scottsdale online retailer selling imported chisels at calderwoodsupply.com since March 2025, with a pending intent-to-use application, Serial No. 98/765,432, in Class 8. Separately, a hobbyist named Nadia Oyelaran sells about forty hand-thrown mugs a year on Etsy under "Calderwood Ceramics." Same mark, same client, two completely different letters — and the second one is not really a demand at all.

Before you start: what you need in hand

Do not write the first sentence until this list is complete. A letter with a wrong first-use date or a registration that lapsed for a class is worse than no letter, because it converts your leverage into the recipient's leverage.

Your rights.

Their conduct.

Your exposure. Run the defenses before they do. Non-use in a class you are asserting invites an abandonment counterclaim; work the Trademark Abandonment Evidence Checklist from the defendant's side of the table. Uncontrolled licensing is the same problem in a different suit. A crowded field of third-party marks shrinks your scope — run the Trademark Clearance Search Checklist against yourself. And if the mark is a color, shape, sound, or product configuration, functionality is the first thing opposing counsel raises; see the Non-Traditional Trademark Application Checklist.

Attachments. Exhibit A: registration certificate and TSDR status. Exhibit B: specimens of your use. Exhibit C: captures of the accused use, each dated. Exhibit D (optional): TSDR record of the recipient's application. A letter with exhibits gets forwarded to counsel; a letter without them gets forwarded to the trash.

The model letter

Everything in [BRACKETS AND CAPITALS] is a fill-in. Everything in [brackets and lowercase] is optional or an alternative. Delete the bracket characters before sending; a letter that goes out with a live placeholder is the professional equivalent of a typo on a résumé, and it will be the first thing quoted back at you.

[SENDER'S LETTERHEAD]

[DATE]

VIA CERTIFIED MAIL, RETURN RECEIPT REQUESTED, AND EMAIL ([RECIPIENT EMAIL])

[RECIPIENT OFFICER NAME], [TITLE] [RECIPIENT ENTITY, EXACT LEGAL NAME] [STREET ADDRESS] [CITY, STATE ZIP]

Re: Unauthorized Use of the [ASSERTED MARK] Trademark — U.S. Reg. No. [NUMBER]

Dear [MR./MS. LAST NAME]:

1. Who we represent. This firm represents [CLIENT LEGAL NAME] ("[CLIENT SHORT NAME]"), a [STATE] [entity type] that has [manufactured / sold / provided] [GOODS OR SERVICES] under the [ASSERTED MARK] mark since [YEAR]. We write concerning [RECIPIENT SHORT NAME]'s use of [ACCUSED DESIGNATION] in connection with [ACCUSED GOODS OR SERVICES].

2. Our client's rights. [CLIENT SHORT NAME] owns U.S. Trademark Registration No. [NUMBER] for [ASSERTED MARK], registered [DATE] for [GOODS/SERVICES AS REGISTERED] in International Class [NN]. A copy of the registration certificate and its current status from the USPTO's TSDR database is enclosed as Exhibit A. [That registration has become incontestable under 15 U.S.C. § 1065, and it is conclusive evidence of our client's exclusive right to use the mark in commerce for the goods identified, subject only to the defenses enumerated in 15 U.S.C. § 1115(b).] [CLIENT SHORT NAME] has used the mark continuously in United States commerce since at least as early as [FIRST USE DATE], has spent more than $[AMOUNT] promoting it, and sold more than $[AMOUNT] of [GOODS/SERVICES] under it in the last [NUMBER] years. Representative examples of that use are enclosed as Exhibit B.

3. Your use. On [DATE], we observed that [RECIPIENT SHORT NAME] is using [ACCUSED DESIGNATION] [on / in connection with] [SPECIFIC DESCRIPTION: PRODUCT LINE, PACKAGING, WEBSITE, DOMAIN NAME, SIGNAGE, ADVERTISING]. [Screenshots / photographs] captured on [DATE] are enclosed as Exhibit C. Publicly available records indicate that [RECIPIENT SHORT NAME] first used this designation on or about [DATE] — more than [NUMBER] years after [CLIENT SHORT NAME] began using [ASSERTED MARK] and [NUMBER] years after our client's registration issued. [We further note that on [DATE], [RECIPIENT SHORT NAME] filed U.S. Application Serial No. [NUMBER] to register [ACCUSED DESIGNATION] for [GOODS/SERVICES].]

4. Why this is unlawful. [ACCUSED DESIGNATION] is [identical / nearly identical] to [ASSERTED MARK] in appearance, sound, and commercial impression, and it is used on [the same / closely related] goods sold through [the same / overlapping] channels to [the same / overlapping] purchasers. Consumers encountering [ACCUSED DESIGNATION] are likely to believe, incorrectly, that [RECIPIENT SHORT NAME]'s [goods/services] originate with, are sponsored by, or are affiliated with [CLIENT SHORT NAME]. That conduct constitutes infringement of a federally registered mark under Section 32 of the Lanham Act, 15 U.S.C. § 1114(1), and false designation of origin and unfair competition under Section 43(a), 15 U.S.C. § 1125(a)(1)(A). [It also violates [STATE] [statutory citation] and the common law of unfair competition.] [Because our client's mark is famous within the meaning of 15 U.S.C. § 1125(c)(2)(A), your use is also likely to dilute it by [blurring / tarnishment].] [Your registration and use of the domain [DOMAIN] with a bad-faith intent to profit from our client's mark violates 15 U.S.C. § 1125(d).]

5. Notice. This letter constitutes actual notice of Registration No. [NUMBER] within the meaning of 15 U.S.C. § 1111. Any use of [ACCUSED DESIGNATION] after your receipt of this letter is made with full knowledge of our client's rights and will be treated as willful. Willful infringement exposes [RECIPIENT SHORT NAME] to an award of its profits, [CLIENT SHORT NAME]'s actual damages, enhancement of any damages award up to three times, and, in an exceptional case, our client's attorney's fees, all under 15 U.S.C. § 1117(a).

6. Demands. [CLIENT SHORT NAME] therefore [demands / requests] that [RECIPIENT SHORT NAME], no later than [DEADLINE DATE]:

a. Permanently cease and desist from all use of [ACCUSED DESIGNATION] and of any other designation confusingly similar to [ASSERTED MARK], including in [product names, packaging, labels, signage, advertising, social media handles, metadata, and search advertising copy];

b. Remove [ACCUSED DESIGNATION] from [WEBSITE URL], all social media accounts, all print and digital advertising, and all marketplace listings, and instruct [distributors / retailers / affiliates] to do the same;

c. [Deliver to us for destruction, or destroy and certify the destruction of, all remaining packaging, labels, signage, and promotional materials bearing [ACCUSED DESIGNATION];]

d. [Expressly abandon U.S. Application Serial No. [NUMBER] under 37 C.F.R. § 2.68, and surrender Registration No. [NUMBER] for cancellation under 15 U.S.C. § 1057(e);]

e. [Transfer the domain name [DOMAIN] to [CLIENT SHORT NAME] by initiating a registrar transfer to the account we will designate;]

f. [Provide an accounting of all gross revenue derived from goods or services sold under [ACCUSED DESIGNATION], by month, from [DATE] to the present;] and

g. Confirm compliance in writing, signed by an authorized officer.

7. Response deadline. We ask for your written response by [DEADLINE DATE]. If we do not receive a response by that date, [CLIENT SHORT NAME] will [consider all available options, including / proceed to] [litigation in the United States District Court for the [DISTRICT] / a proceeding before the Trademark Trial and Appeal Board] without further notice.

8. Preservation. [RECIPIENT SHORT NAME] is now on notice of a reasonably foreseeable dispute and must preserve all documents and electronically stored information relating to the adoption, clearance, and use of [ACCUSED DESIGNATION], including [emails, design files, sales and revenue records, advertising records, supplier and manufacturing records, and any trademark search or opinion]. Suspend any automatic deletion policy that would reach this material.

9. Reservation of rights. This letter is not a complete statement of the facts or of our client's legal position, and nothing in it waives or limits any right or remedy. [CLIENT SHORT NAME] expressly reserves all rights and remedies at law and in equity.

We would prefer to resolve this promptly and without litigation, and we are available to discuss it at your convenience.

Very truly yours,

[ATTORNEY NAME] [FIRM NAME] [PHONE] | [EMAIL]

Enclosures: Exhibits A–[D] cc: [CLIENT CONTACT]

Clause-by-clause drafting notes

¶ 1 — Who we represent. Two sentences, no adjectives. Name the client's legal entity exactly as it appears on the registration; a mismatch between the letterhead client and the record owner is the first thing a good defense lawyer checks, and it is a real problem if an assignment was never recorded. If the client would rather appear reasonable than armed, this is the paragraph a version signed by the client's own CEO replaces. Before ghostwriting that version, check your jurisdiction's rules on lawyer-prepared communications sent under a client's signature — and check Model Rule 4.2, because if the recipient is already represented in this matter, the letter goes to counsel.

¶ 2 — Rights. State exactly what you own and nothing more. The most common self-inflicted wound in trademark enforcement is overclaiming the goods: asserting a Class 8 registration for hand tools against a Class 21 mug seller, or calling a mark "our home goods brand" when the identification says "hand planes." That overstatement is what gets a letter posted on the Lumen Database under a mocking headline. Attach the certificate, do not just cite the number. If the registration is incontestable, say so and cite 15 U.S.C. § 1065 — it forecloses a descriptiveness attack and tells opposing counsel the cheap defenses are gone.

¶ 3 — Their use. Specific, dated, neutral. "On 14 April 2026, we observed" is stronger than "you have been brazenly trading on our goodwill." Facts persuade defense counsel; adjectives persuade nobody and invite the reply that the sender is a bully. State their first-use date affirmatively — it signals you checked priority rather than assumed it, and priority is the one issue that turns your letter into their complaint. Where geography matters, say where each side sells: under Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959), a registrant may be unable to enjoin a remote good-faith junior user until it enters that market, and the doctrine still bites in genuinely local disputes. See Where Your Trademark Rights End.

¶ 4 — The claims. Plead them the way you would in a complaint, because that is what the recipient's lawyer will compare it to. Section 32, 15 U.S.C. § 1114(1), for the registered mark; Section 43(a), 15 U.S.C. § 1125(a)(1)(A), for false designation of origin, which also reaches unregistered marks and trade dress, Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Then walk two or three confusion factors on the actual facts — similarity, relatedness, channels — instead of reciting the whole multi-factor test; the full analysis lives in Trademark Infringement: Proving Likelihood of Confusion. Add dilution only if the mark is famous to the general consuming public; test it against the Trademark Dilution Claim Checklist first, because a dilution claim asserted for a regional brand tells the reader nobody vetted the letter. If the accused conduct is offshore, remember that Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412, 416–17 (2023), confines §§ 1114(1)(a) and 1125(a)(1) to domestic use in commerce, so the demand needs a domestic hook.

¶ 5 — Notice. The paragraph most templates omit, and possibly the most valuable one in the letter. Under 15 U.S.C. § 1111, a registrant who has not displayed the ® symbol cannot recover profits or damages "unless the defendant had actual notice of the registration." The letter is that actual notice, and its receipt date starts the money clock. Even where the client has marked properly, the paragraph does independent work on mental state: Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212, 219 (2020), held that willfulness is not an absolute precondition to a profits award under § 1117(a) while describing the defendant's mental state as "a highly important consideration." Continued use after a clear, well-documented letter is the cleanest willfulness evidence there is. What that is worth is in What a Trademark Win Is Worth and, on proof, Proving Trademark Damages and Disgorging Profits.

¶ 6 — Demands. Numbered, dated, each independently verifiable. "Stop infringing" is not a demand; "remove the designation from calderwoodsupply.com, all packaging, and all Amazon listings by 5:00 p.m. Eastern on 22 May 2026" is. Include (d) only if there is a filing to kill — express abandonment is a one-form filing under 37 C.F.R. § 2.68 and TMEP § 718.01, and voluntary surrender runs under 15 U.S.C. § 1057(e) and 37 C.F.R. § 2.172, so a cooperative recipient can satisfy it in an afternoon. Ask for the accounting in (f) only if you mean to pursue money. Every demand you drop later is a concession you gave away for free.

¶ 7 — Deadline. Fourteen calendar days is the default for a commercial recipient with counsel; ten for an egregious case; twenty-one to thirty for an individual who has to go find a lawyer. A deadline you do not enforce is worse than no deadline. Calendar it the day the letter goes out, and when it passes, do something visible. Silence after a hard deadline is the raw material for laches and acquiescence, and because the Lanham Act has no statute of limitations, laches carries the full weight of the delay argument.

Note the drafting choice inside ¶ 7. "Will consider all available options" preserves credibility while lowering declaratory judgment risk. "Will file suit on 23 May without further notice" is a real threat — and under MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007), the kind of statement that helps establish "a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." MedImmune is not confined to patent cases; the Tenth Circuit applied it to a trademark dispute in Surefoot LC v. Sure Foot Corp., 531 F.3d 1236, 1244–46 (10th Cir. 2008), where demand letters plus TTAB filings supported jurisdiction over the recipient's declaratory action. Whether the letter also drags you into the recipient's forum varies: compare Bancroft & Masters, Inc. v. Augusta National Inc., 223 F.3d 1082, 1087–88 (9th Cir. 2000) (letter expressly aimed at a forum resident), with Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360–61 (Fed. Cir. 1998) (notice letters alone do not satisfy fair play and substantial justice); see also Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1075–77 (10th Cir. 2008). If you cannot tolerate litigating in the recipient's home district, soften ¶ 7 or file first and send the letter with the complaint attached.

¶ 8 — Preservation. Sending a demand makes litigation reasonably foreseeable for both sides, so your client's own preservation duty attaches the same day — send the internal hold in the same hour. The paragraph costs you nothing and, if the recipient later deletes its design files, converts a routine dispute into a Rule 37(e) problem for them.

¶ 9 — Reservation. Boilerplate that earns its place: say the letter is not an exhaustive statement of facts or law, so an omitted claim is not later characterized as abandoned.

Do not label the first letter "For Settlement Purposes Only — FRE 408." You want this letter admissible, to prove notice under 15 U.S.C. § 1111 and willfulness under § 1117(a). Rule 408(a) excludes compromise material offered to prove the validity or amount of a disputed claim; Rule 408(b) expressly permits admission for another purpose. The label does not control the analysis, but it invites an argument you have no reason to invite. Save the Rule 408 legend for the round of correspondence where you are actually trading numbers.

Alternative and optional clauses

The conciliatory version (small business, individual, no bad faith — the Etsy seller). Change "demand" to "request" throughout. Open ¶ 1 with "You may not be aware that [CLIENT] holds a federal registration for [MARK]." Delete ¶ 5 — the willfulness paragraph reads as a threat to an unrepresented person. Drop the accounting and destruction demands. Extend the deadline to thirty days. And offer something: "[CLIENT] is prepared to allow you until [DATE, 90 DAYS OUT] to sell through existing inventory and complete a name change, and will not seek monetary recovery for sales made before that date, provided you confirm in writing by [DATE] that you will make the change." For Nadia Oyelaran and her forty mugs, that letter costs an hour of lawyer time, ends the matter, and does not end up screenshotted next to the word "bully." How the recipient reads all of it is in Responding to a Cease-and-Desist Letter.

The aggressive version (deliberate copying, real revenue). Keep every demand, shorten the deadline to seven or ten days, and add after ¶ 5: "A copy of the complaint we are prepared to file in the United States District Court for the [DISTRICT] is enclosed." Enclosing a filed-but-unserved complaint is the strongest legitimate escalation available: it removes any doubt about willingness to sue, fixes your forum, and Fed. R. Civ. P. 4(m) gives you ninety days from filing to serve — a real negotiating window. It also moots the declaratory judgment problem, because you are the first-filed plaintiff.

Common-law rights only. Replace ¶ 2 with: "[CLIENT] has used [MARK] continuously in connection with [GOODS] in [GEOGRAPHIC MARKETS] since [DATE]. In [YEAR] it sold $[AMOUNT] under the mark to customers in [STATES], spent $[AMOUNT] advertising it in [MEDIA], and has been the subject of [PUBLICATIONS]. Those rights arise under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), and the common law of [STATE]." Delete every reference to a registration number, § 1065, and § 1111 — the actual-notice rule has nothing to do with unregistered marks. Expect a fight about territory and secondary meaning; groundwork in Establishing and Proving Common-Law Trademark Rights. Consider filing an application before sending, so the letter can point to a constructive-use priority date.

Dilution paragraph (famous marks only). "[MARK] is famous within the meaning of 15 U.S.C. § 1125(c)(2)(A): it is widely recognized by the general consuming public of the United States as a designation of source for [CLIENT]'s goods, as shown by [ADVERTISING SPEND], [SALES VOLUME], [UNSOLICITED MEDIA], and [SURVEY EVIDENCE]. Your use is likely to impair its distinctiveness [and to harm its reputation by associating it with [DESCRIPTION]]." TDRA fame means national household recognition, not niche renown; see Trademark Dilution Under the TDRA.

Cybersquatting paragraph. "[RECIPIENT] registered [DOMAIN] on [DATE], after [MARK] had become distinctive, and has [offered it for sale for $[AMOUNT] / redirected traffic to a competing site / provided false WHOIS contact information]. That conduct evidences a bad-faith intent to profit under 15 U.S.C. § 1125(d)(1)(B) and exposes [RECIPIENT] to statutory damages of $1,000 to $100,000 per domain name under 15 U.S.C. § 1117(d), in addition to transfer." A UDRP filing is often faster and cheaper — see Cybersquatting and the ACPA and Filing a UDRP Complaint to Recover a Domain.

Former licensee holding over. Lead with the contract. "The License Agreement dated [DATE] terminated on [DATE] under Section [N], which required [RECIPIENT] to cease all use of [MARK] within [N] days and to [destroy / return] all materials bearing it. Continued use is both a breach of Section [N] and infringement under 15 U.S.C. § 1114(1)." Read the agreement first for notice-and-cure, arbitration, forum selection, and sell-off provisions — a demand that ignores a mandatory cure procedure breaches your own contract. See Drafting a Trademark License That Survives and the Trademark License Quality Control Checklist.

Keyword and paid-search demand. Narrow it, hard. "We do not object to your purchase of [MARK] as a search keyword. We object to your advertisement, which reads '[AD HEADLINE]' and implies an affiliation that does not exist." Broad demands to stop bidding raise both declaratory judgment and competition-law problems; 1-800 Contacts, Inc. v. FTC, 1 F.4th 102 (2d Cir. 2021), vacated the Commission's order but did not immunize bidding restrictions from antitrust scrutiny. The program is in Running a Keyword and Paid-Search Trademark Program.

Covenant not to sue (to defuse a threatened DJ action). If the recipient has filed or credibly threatened a declaratory action and you would rather walk away than litigate, a broad enough covenant can moot it. In Already, LLC v. Nike, Inc., 568 U.S. 85, 93–95 (2013), an unconditional, irrevocable covenant reaching current products and colorable imitations mooted the challenger's invalidity counterclaim; narrow, conditional, or future-reserving covenants do not. "[CLIENT] unconditionally and irrevocably covenants not to sue [RECIPIENT] or its distributors and customers for trademark infringement, unfair competition, or dilution based on [RECIPIENT]'s use of [DESIGNATION] as it exists today or in any colorable imitation thereof."

Sell-off and phase-out. "[CLIENT] will not object to sales of existing inventory bearing [DESIGNATION] through [DATE], provided that (i) no additional inventory is manufactured or ordered after the date of this letter, (ii) [RECIPIENT] provides an inventory count within ten days, and (iii) all advertising and online use ceases immediately." The single most effective concession in trademark practice: it costs the client little, removes the recipient's main practical objection, and converts a fight into a calendar.

Settlement structure. A constructive response usually lands as a settlement agreement and release, a coexistence agreement, or occasionally a license — see the Trademark Coexistence Agreement — Template and the Trademark License Agreement — Template. Whatever the form, get an express abandonment or a recorded assignment for any conflicting filing; a handshake on a pending application is worth nothing when it publishes.

Sending mechanics

Where it goes. To a named officer at the entity's principal place of business, with a copy to the registered agent listed with the Secretary of State. If the recipient has a pending USPTO application, the correspondence address in TSDR identifies its trademark counsel — but sending to that lawyer without more can be awkward under Model Rule 4.2 if the representation is limited to prosecution. The safer course is to send to the client and copy prosecution counsel, or to call counsel first and ask whether they are authorized to accept the letter.

How it goes. Certified mail, return receipt requested, and email, and — for anything genuinely urgent — overnight courier with signature. The point is not redundancy for its own sake; it is that you will later need to prove the date of receipt, because that date is when the § 1111 actual-notice clock starts and when the willfulness period begins. Keep the certified mail green card, the courier's signature record, the email transmission log, and a PDF of the letter exactly as sent, hashed and filed. For a foreign recipient, add courier delivery and a translated cover paragraph, and do not assume the Hague Service Convention has anything to do with a pre-suit letter — it does not, but service of a later complaint abroad can take months, which should affect your deadline.

Fees. Sending the letter costs postage. What comes next is where the money is, and the numbers below are the ones clients ask about on the same call.

| Next step if ignored | Authority | Fee posture | |---|---|---| | Extension of time to oppose | 37 C.F.R. § 2.102 | First 30-day extension free; later extensions carry per-class fees under 37 C.F.R. § 2.6 — verify the current schedule before filing | | Notice of opposition (ESTTA) | 15 U.S.C. § 1063; 37 C.F.R. § 2.101 | Per-class government fee; see the Notice of Opposition — Template | | Petition to cancel (ESTTA) | 15 U.S.C. § 1064; 37 C.F.R. § 2.111 | Per-class government fee; see Filing a Petition for Cancellation | | UDRP complaint | ICANN UDRP ¶ 4(a) | Provider fee, typically low four figures for a single-member panel; no discovery, no damages, transfer only | | Federal complaint | 15 U.S.C. § 1121; 28 U.S.C. § 1338(a) | Statutory filing fee under 28 U.S.C. § 1914(a) plus the administrative fee | | TRO / preliminary injunction | Fed. R. Civ. P. 65 | Security under Rule 65(c); the irreparable-harm presumption added to 15 U.S.C. § 1116(a) by the Trademark Modernization Act of 2020 is the reason this is worth doing |

Whether the fight belongs at the Board or in a district court is a real strategic fork, not a formality — the Board can cancel a registration but cannot enjoin use or award a dollar, and its findings can have preclusive effect in later litigation under B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 160 (2015). See Federal Court vs. TTAB and TTAB Proceedings: Opposition vs. Cancellation.

What to calendar the day the letter goes out.

Common mistakes

Overstating the registration. Asserting goods you do not have. The recipient's counsel pulls TSDR in ninety seconds, finds the gap, and now controls the conversation. Read the identification aloud before you write the sentence; if you need a broader identification, that is a prosecution problem, addressed in the Trademark Application and Prosecution Toolkit.

Skipping the priority check. If the recipient used the designation first in its territory, your demand letter is their complaint's Exhibit 1 and your admission that the marks are confusingly similar. That admission is very hard to walk back.

Threatening what you will not do. Model Rule 4.1 and Rule 8.4(c) are the floor. Beyond ethics, an unenforced threat destroys the credibility of every letter your firm sends to that lawyer for the next decade.

Threatening criminal referral to gain civil leverage. Counterfeiting is a federal crime under 18 U.S.C. § 2320, but several jurisdictions expressly prohibit threatening criminal charges to obtain an advantage in a civil matter — see, for example, California Rule of Professional Conduct 3.10 and Texas Disciplinary Rule of Professional Conduct 4.04(b)(1). Know your rule before you write the sentence.

Sending to a party with real defenses. Nominative fair use, classic descriptive fair use under 15 U.S.C. § 1115(b)(4) and KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117–18 (2004), first sale, expressive use after Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023) — each of these turns your letter into a press release for the other side. Run the defenses first; the map is in the Trademark Defenses Toolkit and Descriptive and Nominative Fair Use.

Forgetting the letter is public. Recipients post demand letters. Write every paragraph as though it will be read by a journalist, a judge, and your client's customers. Baseless enforcement has consequences beyond embarrassment: a prevailing defendant can recover fees in an exceptional case under 15 U.S.C. § 1117(a) and Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014), and while pre-suit demands generally enjoy Noerr-Pennington protection as petitioning activity, that protection falls away for objectively baseless claims, Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49, 60–61 (1993). The abusive-enforcement problem, from both directions, is collected in the Trademark Integrity Toolkit.

Sending and then going quiet. The most common failure is not an overaggressive letter; it is a good letter followed by eleven months of nothing. That silence is the raw material for laches and acquiescence, and it teaches the recipient that your client does not follow through.

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Across the Wider Corpus

The Marksy library now extends well beyond the register. These sit outside this document's immediate subject and bear on it directly — sector-specific brand practice, the adjacent federal regimes, and the disputes a trademark question runs into once it leaves the USPTO.

This document is general information about the law, not legal advice, and does not create an attorney-client relationship. Trademark and copyright outcomes turn on specific facts. Marksy is not a law firm.

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