Stop Infringement with a Trademark Cease and Desist Letter
Cartas de cese y desista en inglés y en español.
A well-built cease and desist letter resolves many trademark disputes without a lawsuit. A careless one can hand the infringer the right to sue you first, in its own court. We prepare letters that state your rights accurately, ask for specific steps, and fit a plan for what happens next, in English, Spanish, or both.
Received a letter instead?Responding to a Cease and Desist →
A cease and desist letter is a notice, a demand, and the start of a record
A trademark cease and desist letter tells another business that its name, logo, packaging, domain, or listings infringe your rights, and asks it to stop. Most trademark disputes end at this stage. A letter costs far less than a lawsuit, and many recipients, especially small sellers who did not run a search, change course once they understand the problem.
The letter also does legal work. If you have not been using the ® symbol, a registrant generally cannot recover profits or damages unless the infringer had actual notice of the registration (15 U.S.C. § 1111). A letter that cites your registration gives that notice. It also fixes the date the other side knew of your rights, which matters if you later argue that its infringement was willful, and it shows a court that you did not sit on your rights.
The same letter can work against you. A letter that accuses infringement and threatens suit can give the recipient the right to file first in its own court, and a letter sent to the wrong people, such as the recipient's customers, can lead to a counterclaim. Getting the content, the tone, and the recipients right is what makes a letter work.
What a letter typically demands
- Stop using the mark, or a confusingly similar one, by a set date
- Remove listings, ads, social media handles, and website content
- Withdraw a pending trademark application or Florida registration
- Transfer a domain name that uses the mark
- Sell off, destroy, or surrender existing inventory and labels
- Identify suppliers and report units sold, where counterfeits are involved
- Confirm compliance in writing by the deadline
How tone changes the outcome
The right tone depends on who the recipient is, how serious the harm is, and whether you are ready to sue. A letter written to impress the client often works worse than one written to get the recipient to comply.
| Approach | Suited to | What it says | Risk of a first-filed suit |
|---|---|---|---|
| Notice letter Low key | Small or local businesses, probable innocent adopters, distributors, former licensees | Identifies your rights, explains the conflict, and invites a call or a change of name within a reasonable time | Lower, if it does not accuse infringement or threaten suit. It may not be enough for a court to find a live controversy. |
| Firm demand Most common | Competitors, sellers who ignore a notice, uses that are spreading | States that the use infringes, lists specific demands, and sets a deadline | Moderate to high. An express charge of infringement plus a demand to stop is often enough for a court to hear a declaratory judgment case. |
| Final demand with draft complaint Escalation | Willful infringers, repeat offenders, cases where you have decided to sue if refused | Attaches a draft complaint and states when it will be filed, and where | High. Send it only when you are ready to file promptly in your chosen court. |
Recipients react to tone. A respectful letter that explains the confusion problem and offers a reasonable transition period gives a business room to rebrand without losing face. An aggressive letter with an unrealistic 48-hour deadline, inflated damages claims, or demands the law does not support tends to produce one of three results: the recipient hires counsel and digs in, posts the letter online, or files first. Over-reaching can also shape how a judge views you later, including on attorney's fees.
Firm does not mean hostile. Our letters state the facts, cite the registration, explain why confusion is likely, ask for specific steps, and set a deadline that is short enough to show urgency and long enough to be credible.
An aggressive letter can let the recipient sue first, in its home court
Federal courts can declare the rights of the parties "in a case of actual controversy" (28 U.S.C. § 2201(a)). A recipient who believes it does not infringe can ask a court to say so, and a cease and desist letter is often the evidence that the controversy is real.
The standard. In MedImmune, Inc. v. Genentech, Inc. (2007), the Supreme Court held that the question is whether the facts alleged, "under all the circumstances," show a substantial controversy between parties with adverse legal interests, "of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." The Court rejected the idea that a party must first expose itself to liability before it can sue. Courts apply the same approach in trademark cases.
What courts look at. The content of the letter matters most: whether it accuses the recipient of infringement, demands that it stop, or threatens litigation. Courts also weigh the history between the parties, such as objections in Trademark Trial and Appeal Board proceedings, and anything else that signals an intent to enforce.
In Florida's federal courts. The Eleventh Circuit has not set a trademark-specific test, so district courts apply MedImmune case by case. In HIS IP, Inc. v. Champion Window (M.D. Fla. 2007), a party's course of conduct implied a threat of suit. In Nationwide Industries v. D&D Technologies (M.D. Fla. 2014), a letter that did not expressly threaten litigation or accuse actionable conduct did not create a controversy. In Swiss Brand Ltd. v. Wenger S.A. (S.D. Fla. 2020), there was no express threat, but objections at the TTAB and other conduct were enough under all the circumstances.
Your letters can also bring you to the recipient's courts. In Frida Kahlo Corp. v. Romeo Pinedo (11th Cir. 2026), the court held that cease and desist letters sent into Florida by foreign senders, claiming rights the senders allegedly did not own, supported personal jurisdiction in Florida over tortious interference and Lanham Act claims. Letters are contacts with the place you send them.
Who filed first matters. Federal courts generally favor the first-filed case. They have discretion to set aside a declaratory case filed only to pre-empt a suit the recipient expected, and a letter stating an intent to sue if a condition is not met is often the evidence that the filing was anticipatory. That exception is discretionary, though, and you cannot count on it.
Ways to lower the risk
- Decide before sending whether you would sue if the recipient refuses, and where
- For a recipient far from Florida, consider filing first and serving the complaint with a settlement letter
- Start with a notice letter when the facts are close or the recipient may be an innocent adopter
- Do not threaten a suit you are not ready to file
- Send letters to the infringer, not its customers, retailers, or licensees
- Keep every claim accurate: the marks you own, where they are registered, and what you can recover
Letter first, letter with the lawsuit, or no letter at all
A letter is the right first step in most cases, but not all. The choice depends on the infringer, the evidence, and how much harm continues while you wait for a reply.
Letter before suit
- Most disputesDefault
Domestic businesses with a real, traceable presence that may comply once they understand the conflict.
- Builds the recordNotice
Gives actual notice of your registration and shows you acted promptly.
- Watch the clockDelay
Long letter exchanges can undercut a later request for a preliminary injunction.
Letter with the lawsuit
- File, then writeForum control
You file in Florida, then send the complaint with an offer to resolve the case before the recipient must answer.
- When it fitsSelective
The recipient is likely to race to its own court, has ignored earlier contact, or the harm is serious and ongoing.
- Trade-offCost
Filing fees and pleadings come first, and some recipients would have complied with a letter.
No letter
- CounterfeitersAssets at risk
A warning lets them move inventory, close storefronts, and empty marketplace accounts.
- Ex parte seizure§ 1116(d)
For counterfeit marks, a court can order goods and records seized without notice, on specific findings.
- Sealed filings and asset freezesRule 65(b)
Temporary restraining orders without notice, including multi-seller "Schedule A" cases that freeze marketplace funds.
The Lanham Act's ex parte seizure remedy is narrow. The applicant must give the U.S. attorney reasonable notice, must not have publicized the seizure, must post security, and must show with specific facts that the defendant would "destroy, move, hide, or otherwise make such matter inaccessible to the court" if given notice (15 U.S.C. § 1116(d)). A cease and desist letter sent to that defendant first would undercut the showing. The same logic applies to requests for a temporary restraining order without notice under Federal Rule of Civil Procedure 65(b). See Counterfeiting Claims and Counterfeiting Investigations. Sellers on the other side of those cases can find help on Schedule A Disputes.
What goes into a well-built letter
Each element has a job. Leaving one out weakens the letter; overstating one creates risk.
| Element | What it says | Why it matters |
|---|---|---|
| Your rights | Registration numbers, owner, goods and services, first-use dates, and any Florida or foreign registrations | A registration carries legal presumptions in your favor, and citing it gives actual notice under § 1111 |
| The infringing use | Exactly what was used, where, and since when, with screenshots, listing numbers, and URLs | Specific facts show you have done your homework and leave less room for denial |
| Why confusion is likely | A short application of the factors courts use: similar marks, related goods, shared channels, any actual confusion | It persuades the recipient's lawyer, who will run the same analysis |
| The demands | Specific, achievable steps, with a phase-out period where appropriate | Vague demands invite argument; impossible ones invite refusal |
| The deadline | A date for a written response, usually 10 to 21 days depending on the facts | Creates urgency without looking unreasonable to a court that later reads the letter |
| Next steps | What you may do if there is no response, stated accurately and only if you mean it | Threats you do not carry out weaken later letters and can create a declaratory judgment opening |
| Preservation request | A request to keep sales records, listings, and communications | Supports later evidence requests; see Preservation Notices |
| Reservation of rights | A statement that the letter does not waive any claim or remedy | Avoids arguments that you accepted the use or limited your claims |
Evidence to collect before the letter goes out
Once a recipient has the letter, listings change and websites disappear. Capture the evidence first, so the record shows what the infringer was doing before it knew you were watching. For counterfeits, a test purchase with chain-of-custody records is often the most persuasive evidence; see Counterfeiting Investigations.
Check your own position too. Confirm that your registration is live, that the owner of record is correct, that maintenance filings are current, and that your use predates theirs. A letter built on a lapsed registration or the wrong owner name hands the recipient an easy reply.
Before-sending checklist
- Dated screenshots and archived copies of sites, listings, and social posts
- Test purchase, photos, packaging, and receipts
- Registration status, ownership, and maintenance deadlines in USPTO records
- Your first-use evidence and the other side's apparent first use
- Any actual confusion: misdirected emails, calls, reviews, or returns
- Who the infringer really is: entity, owners, address, and registrations of its own
- Your sales and advertising figures, kept for a damages evaluation
Letters to sellers and notices to marketplaces are different tools
For online infringement you usually have two routes: a letter to the seller, and a report to the platform that hosts the listing. Many cases need both.
| Letter to the sellerDirect demand | Notice to the marketplacePlatform reporting tools | |
|---|---|---|
| What it reaches | The business itself: every channel, its inventory, its own website, and future conduct | Only the listings on that platform |
| Speed | Depends on the recipient's reply | Often fast once the platform accepts the report |
| Remedies | Phase-out, inventory, accounting, settlement terms, payment | Removal of listings; repeat infringers can lose accounts |
| Legal basis | Lanham Act and Florida law claims | Platform policy for trademarks; the DMCA for copied photos and text |
| Main risk | A declaratory judgment suit in the seller's home court | An inaccurate report, such as calling genuine goods counterfeit, can lead to claims and loss of platform tools |
| Who it fits | Identifiable U.S. sellers and competitors | Anonymous or overseas sellers, high-volume listings |
◆ marks rows where the two routes differ.
Be accurate about what you are reporting. Reselling genuine goods is generally lawful, so a report against a reseller of authentic products needs a real basis, such as material differences from the goods you sell here. In Verbena Products LLC v. Pierre Fabre Dermo-Cosmetique USA, Inc. (S.D. Fla. 2020), a brand's notice to eBay that a reseller's genuine goods were counterfeit was protected from a tortious interference claim, but a defamation claim over the same notice went forward. Copied product photos are a copyright matter for DMCA Takedowns. For platform enrollment, see Amazon Brand Registry.
Letters to foreign infringers, and letters in Spanish
Many infringers our clients face are outside the United States: a Mexican or Colombian manufacturer shipping through PortMiami, a European company launching a U.S. website, or a marketplace seller based in Asia. U.S. trademark rights reach only use in U.S. commerce. In Abitron Austria GmbH v. Hetronic International, Inc. (2023), the Supreme Court held that the Lanham Act's main infringement provisions "extend only to claims where the infringing use in commerce is domestic." A U.S. letter can demand that a foreign company stop selling into the United States; stopping its sales at home requires rights, and often counsel, in that country.
A letter to a foreign company should account for how it will be read. We often send it in Spanish with an English version and say which controls. A Spanish-speaking owner reads a letter written in clear Spanish differently from a translated English demand, and it removes any later claim that the recipient did not understand it. Our attorneys work in English and Spanish; letters in Portuguese, French, German, or Italian are prepared with qualified translators.
Think about enforcement before you write. If the recipient has no U.S. presence, assets, or registrations, a lawsuit may require service abroad and may be hard to enforce. In that case the stronger tools may be CBP recordation to stop goods at the border, marketplace reporting, and filings in the recipient's country through the Madrid Protocol or local counsel.
For Latin American and European brand owners
- Your home-country registration does not by itself give rights in the United States; check that you hold a U.S. registration or Madrid designation first
- If the infringer is in the United States and you are not, the letter can still come from us, under U.S. law
- Coordinate with your home counsel so the U.S. letter and any foreign action say the same thing
- Consider the recipient's language, its home courts, and whether a U.S. judgment could be enforced there
See Latin American Brands, European Brands, and Foreign Trademark Counsel.
Waiting too long, and pushing too hard, both carry risk
Courts expect a brand owner to act promptly once it knows of an infringement, and to assert only the rights it actually has.
Delay weakens an injunction request
A plaintiff gets a rebuttable presumption of irreparable harm once it shows likely success (§ 1116(a)). Delay can rebut it. In Wreal, LLC v. Amazon.com, Inc. (11th Cir. 2016), an unexplained five-month delay in seeking a preliminary injunction supported denying it.
Wreal v. Amazon.com (11th Cir. 2016)Laches can bar money
The Lanham Act has no statute of limitations, so courts borrow an analogous state period. In Pinnacle Advertising & Marketing Group v. Pinnacle Advertising & Marketing Group (11th Cir. 2021), a plaintiff that sued after Florida's four-year period, without contacting the defendant before suing, lost its damages claims, though the court left room for an injunction.
Kason Industries (11th Cir. 1997) · Pinnacle (11th Cir. 2021)Progressive encroachment
Delay can be excused when an infringer starts small and later moves into more direct competition. The clock runs from when you knew or should have known you had a provable claim. A timely letter documents when that was.
Kason Industries (11th Cir. 1997)Over-reaching invites fees and counterclaims
Courts can award attorney's fees in "exceptional cases" (§ 1117(a)), and over-reaching positions can count against a brand owner. Letters to a recipient's customers or licensees that claim rights you do not have can support tortious interference claims, as in Frida Kahlo Corp. (11th Cir. 2026).
15 U.S.C. § 1117(a)Florida's "bad faith demand letter" law covers patents, not trademarks
Florida prohibits demand letters that make bad faith assertions of patent infringement (Fla. Stat. § 501.993). There is no Florida statute aimed specifically at trademark letters, but general claims such as tortious interference, defamation, and unfair competition remain available against a sender who over-reaches. Florida's ethics rules also bar a lawyer from threatening criminal charges solely to gain an advantage in a civil matter (Rule 4-3.4(g)), so a letter to a counterfeiter should not threaten prosecution as leverage.
Fla. Stat. § 501.993 · R. Regulating Fla. Bar 4-3.4(g)How long have you known?
Enter a date to see how much time has passed. This is a rough guide, not a deadline: laches depends on prejudice to the other side and other facts, and delay in seeking an injunction is measured in months, not years.
How we prepare a cease and desist letter
Robert Thornburg leads Lanham Act litigation and counterfeit enforcement, Susan Latham handles disputes that also involve false advertising or copyright, James Leahy focuses on e-commerce and technology disputes, and Melissa Dangond Crews works with Spanish-speaking clients and on TTAB matters.
- Day 1Intake and conflictsWe confirm who the infringer is and that we can act, then review what you sent.
- Days 1–5Check your rightsRegistrations, ownership, maintenance, first-use dates, and any weak points.
- Days 1–5Capture the evidenceScreenshots, archives, test purchases, and who stands behind the seller.
- Week 1Choose the routeLetter, letter with suit, platform report, or a sealed filing; English, Spanish, or both.
- DraftWrite and approveWe draft, you review the facts and demands, and we agree on the deadline and next step.
- After sendingFollow throughTrack compliance, negotiate terms in writing, or move to the step the letter described.
Timing depends on how much evidence is already in hand and whether a test purchase or investigation is needed. If the recipient agrees, we put the resolution in a signed agreement rather than relying on an email.
Five most common mistakes in sending a cease and desist letter
Most letters that backfire do so because of who received them, when they were sent, or what they claimed, not because the brand owner was wrong about the infringement.
Threatening a lawsuit you will not file
A letter that promises suit by a date, followed by silence, teaches the recipient to ignore you and can still give it grounds to file a declaratory judgment case in its own court.
Declaratory judgmentState only next steps you are ready to take, and decide on the forum before the letter goes out.
Writing to the infringer's customers
Letters to retailers, licensees, or venues that do business with the infringer can interfere with those relationships. If the rights claimed are wrong or overstated, they can support tortious interference claims and personal jurisdiction where the letters were sent.
Tortious interferenceWrite to the infringer. Approach customers or platforms only with accurate claims and advice.
Warning a counterfeiter
A letter to a counterfeiter can lead to inventory disappearing, storefronts closing, and marketplace balances being withdrawn, and it can undercut a later request for a seizure or asset freeze without notice.
§ 1116(d) · Rule 65(b)For counterfeits, investigate first and consider a sealed filing before any contact.
Letting the letter exchange drag on
Months of back-and-forth without a decision weakens a later preliminary injunction request and, if it runs long enough, supports a laches defense.
Delay · lachesSet a decision date when you send the letter, and keep it.
Overstating your rights
Claiming registrations you do not have, goods your registration does not cover, or damages the law does not allow invites a reply that discredits the whole letter, and can be used against you on fees.
§ 1117(a)Check the register before sending, and keep every statement accurate.
Frequently asked questions
Do I need a registered trademark to send a cease and desist letter?
No. Unregistered marks are protected under 15 U.S.C. § 1125(a) and Florida common law, but you must prove ownership, distinctiveness, and priority yourself. A federal registration supplies legal presumptions on those points, which makes a letter much stronger. See Federal Trademark Applications.
Can I write the letter myself?
You can, but self-written letters often overstate rights, threaten suits the owner will not bring, or go to the wrong recipients. Each of those can lead to a declaratory judgment case, a counterclaim, or a weaker position later.
How long should I give the recipient to respond?
Usually 10 to 21 days for a written response, with a longer phase-out for changing signs, packaging, or inventory where that is reasonable. Counterfeits and ongoing harm justify shorter deadlines.
What if the recipient ignores the letter?
Silence does not end your rights, but it does start a clock you control. The usual next steps are a final letter, platform reports, a TTAB proceeding if the recipient has filed an application, or a lawsuit. Waiting months without acting can weaken a later injunction request.
Will sending a letter let the other side sue me first?
It can. Under MedImmune (2007), courts look at all the circumstances. Letters that accuse infringement and threaten suit often create a controversy the recipient can take to court. We weigh that risk before deciding whether to send a letter, file first, or both.
Should I send a letter to a counterfeiter?
Usually not before you have evidence and a plan. A warning can lead counterfeiters to move goods and money. Ex parte seizure orders and temporary restraining orders without notice exist for this situation. See Counterfeiting Claims.
Can you send the letter in Spanish?
Yes. Our attorneys work in English and Spanish, and we often send both versions to Spanish-speaking recipients. Letters in Portuguese, French, German, and Italian are prepared with qualified translators.
Is a cease and desist letter the same as a demand letter?
They overlap. A cease and desist letter focuses on stopping the use. A demand letter usually quantifies money or settlement terms and often doubles as a settlement communication. See Pre-Suit Trademark Demand Letters.
Send us the infringing use
Send us screenshots, links, or photos of the infringing use, your registration numbers if you have them, and any earlier contact with the other side. We will check your rights, tell you whether a letter, a platform report, or a filing fits, and what the letter should say.
- Rights check before any letter goes out
- Letters in English, Spanish, or both
- Platform reports and DMCA notices alongside the letter
- Coexistence, phase-out, and settlement agreements
Prefer to talk first? Call or email, or message us on WhatsApp. Atendemos en español.
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) — Legal Information Institute
- Swiss Brand Ltd. v. Wenger S.A., No. 20-21095 (S.D. Fla. Dec. 1, 2020) — GovInfo
- Frida Kahlo Corp. v. Romeo Pinedo, No. 24-10293 (11th Cir. Apr. 17, 2026)
- Wreal, LLC v. Amazon.com, Inc., No. 15-14390 (11th Cir. 2016)
- Kason Industries, Inc. v. Component Hardware Group, Inc. (11th Cir. 1997)
- Injunctive relief available even where laches bars damages (Pinnacle, 11th Cir. 2021) — IP Update
- 15 U.S.C. § 1116 (injunctions; ex parte seizure) — LII
- 15 U.S.C. § 1117 (recovery; statutory damages) — LII
- 15 U.S.C. § 1111 (notice of registration) — LII
- Abitron Austria GmbH v. Hetronic International, Inc. (2023) — Supreme Court
- Verbena Products v. Pierre Fabre Dermo-Cosmetique (S.D. Fla. 2020) — Tushnet's 43(B)log
- Understanding the First-to-File Rule and Its Anticipatory Suit Exception — The Florida Bar Journal
- Rule 4-3.4, Rules Regulating The Florida Bar — FloridaJustice
- Fla. Stat. § 501.993, Bad faith assertions of patent infringement — Florida Senate
General information, not legal advice for your situation. Statutes, rules, and fees as of October 2026. Last reviewed October 28, 2026.