Trademark Enforcement & Cease-and-Desist

A cease-and-desist letter is a documented demand to stop allegedly infringing activity, not a court order. It puts the recipient on notice, sets a clear basis for future legal action, and frequently resolves disputes without litigation. The USPTO confirms that responses to a C&D may include denial, negotiation, declaratory judgment action, or strategic non-response. The letter's value lies in what it documents and what it preserves: a clean record of when the rights holder asserted the mark, and the strategic options that record opens later.

A cease-and-desist letter that goes unanswered commonly escalates to a USPTO Trademark Trial and Appeal Board proceeding, a federal court complaint, or a platform brand-registry escalation. Federal litigation under the Lanham Act, 15 U.S.C. § 1125 carries the prospect of injunctive relief, disgorgement of profits, and in exceptional cases attorney's fees under 15 U.S.C. § 1117. The right next step depends on the strength of the claim, the recipient's apparent capacity to defend, and the business stakes. We assess the leverage before recommending escalation.

A Letter of Protest is an evidence package submitted to the USPTO Deputy Commissioner for Trademark Examination, asking the Examining Attorney to refuse a pending trademark application based on prior rights, descriptiveness, or other registrability grounds. The USPTO accepts Letters of Protest within 30 days of publication, or before publication on stricter standards. The filing fee is $150. Letters of Protest are not contested proceedings; they are evidence-only submissions. When successful, the Examining Attorney issues an Office Action against the applicant, often resolving the conflict before any inter partes proceeding becomes necessary.

An Extension of Time to Oppose preserves your right to oppose a published trademark application without committing to fight. Within the 30-day publication window in the Official Gazette under Section 13 of the Lanham Act, 15 U.S.C. § 1063, you can file a 30, 60, or 90 day extension, with another 60-day extension available if the applicant consents. The USPTO received 17,765 extension requests in fiscal year 2024, reflecting the practical reality that most trademark conflicts are resolved during the extension window through direct negotiation rather than through opposition filings.

A trademark coexistence agreement is a contract between two trademark owners with similar or related marks, defining each party's rights, restrictions, and obligations to operate alongside each other in the marketplace. It can specify geographic restrictions, channels-of-trade limits, goods or services scope, and mutual consent to register. Properly drafted, a coexistence agreement resolves a brand conflict at a fraction of the cost of an inter partes proceeding. A senior user must draft carefully: an inappropriate coexistence with one competitor can weaken the senior user's position against future similarly-situated competitors.

Amazon Brand Registry is a platform-specific enforcement system that gives registered trademark owners reporting tools to remove listings infringing their brand. A DMCA takedown is a copyright-specific remedy under 17 U.S.C. § 512, used when copyrighted content is reproduced without permission. Brand Registry handles trademark and counterfeit issues. The two often run on parallel tracks. Choosing the right one depends on what is being copied, where, and what evidence the platform requires.

It can. A poorly constructed C&D letter that creates a credible, specific threat of imminent litigation can give the recipient grounds to file a declaratory judgment action first, in a venue of their choosing, asking a court to declare non-infringement. The letter can also generate public-relations risk if the recipient publishes it. We draft the letter to assert rights without ceding control over forum or narrative, and we advise against sending one when the underlying claim is too weak to defend.

No. Common-law trademark rights arise from actual use of a mark in commerce and are enforceable under Lanham Act § 43, 15 U.S.C. § 1125, even without registration. Federal registration strengthens your position significantly: it provides nationwide constructive notice, presumption of validity, and platform-enforcement eligibility. If you are enforcing without a registration, the case turns on documented evidence of priority of use, geographic reach, and acquired distinctiveness. We assess the registration status before recommending the enforcement strategy.

Yes. Trademark rights depend on consistent enforcement and consistent use. A mark used by multiple unauthorized parties without challenge weakens through dilution, and a mark commonly used to refer to an entire product category can become generic. Both outcomes can extinguish the registration. Examples in trademark history include "escalator," "linoleum," and "zipper," all once protected marks that lost trademark status. Active enforcement preserves distinctiveness, which is the foundation of trademark rights.

Sometimes. US trademark rights extend to use in US commerce, including imports through US ports recorded with US Customs and Border Protection under a recorded mark. Online infringement by a foreign seller targeting US consumers may be reachable through US courts under personal jurisdiction analysis or through Madrid Protocol filings in the seller's home jurisdiction. Platform takedowns work cross-border because the platforms are global. The strategy depends on where the seller operates, where you have rights, and what remedy you need.