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Cease and Desist Trademark Infringement Form

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A cease and desist trademark infringement letter is a written document that demands a person or a business stop using trademarked material without permission of the person or business owning the trademark. A trademark designates a special sort of registration for intellectual property. The letter should include information about the unauthorized use of the trademark (such as when and how it occurred) as well as what may happen if the recipient chooses to continue to use the trademark without permission.

Cease and Desist Trademark Infringement

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1099-MISC Form › W-2 › W-9 ›

What is a Cease and Desist Trademark Infringement Letter?

A cease and desist order is used to stop a certain infringing activity, in this case, trademark infringement. Trademark infringement is when a party is using a registered trademark or a similar mark for another company as their own. This form will serve to formally request that this company or business will cease using the registered trademark.

This order will need to have a substantial amount of information regarding the current trademark infringement. Additional records or documents that demonstrate proof of these activities can be included with the cease and desist request.

Because a cease and desist order can lead to legal action or disputes, it is important to have one filled out professionally and accurately. A law firm can assist you in completing a trademark infringement cease and desist letter for your company or business.

Components of a cease and desist trademark infringement letter

A cease and desist trademark infringement letter will typically include:

  • Identification of complaining party (trademark owner) and its trademark rights (include information about your federal registration with the trademark office)
  • Identification of the challenged use
  • Statement of basis for concern or complaint
    • Degree of similarity of marks
    • Degree of similarity of good/services
    • Strength of mark
    • Overlap in promotional or advertising channels
    • Evidence of actual confusion (ex: customers visiting the incorrect web pages or social media pages)
    • Any indication of bad faith
  • Statement that you will pursue trademark litigation if the conduct does not cease

A trademark cease and desist letter should be sent via certified mail, return receipt requested.

Legal Considerations

Before Sending

Before sending a cease and desist letter, you should consider the consequences.  A cease and desist letter is often the precursor to litigation. Before sending the letter you should:

  • Identify and research the alleged infringer
  • Confirm the priority of use - United States trademark law says that the legal right to use a trademark belongs to the first company to use the mark.  Registration with the United States Patent and Trademark Office (USPTO) alone does not ensure that you have the right to use a mark. Research the date that the potential infringer first began to use the mark.  Compare that date to the use by the trademark owner.
  • Assess the strength of your client’s case, including any potential defenses
  • Weigh the business and legal ramifications
  • Consider alternatives to sending the letter
  • Assess the risk of a declaratory judgment action
  • Speak to an experienced trademark attorney

How to analyze a trademark cease and desist letter

If you have received a trademark cease and desist letter, you should consider:

  • Who has priority of use?
  • Determine whether the trademark in question infringes upon the other trademark:
    • Are the marks similar?
    • Are the goods and services offered similar?  
    • Is the marketing similar?
    • Is there evidence of consumer confusion?

If you have any questions as to whether your trademark infringes upon the trademark of another, you should seek legal advice from an experienced intellectual property lawyer.

Sample Cease and Desist Trademark Infringement

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Sample Cease and Desist Trademark Infringement

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