Trademark Cease and Desist Letters Both Sides of the Exchange: A Practical Guide

68 questions on trademark cease and desist letters both sides of the exchange, answered and cited by the UpLaw editorial team.

• Can a demand letter be sent by a business executive rather than a lawyer?
• Can a demand letter create a justiciable controversy without expressly threatening suit?
• Can a recipient's use be modified rather than stopped?
• Does a recipient's own federal registration bar a dilution claim?
• Does sending a demand letter start the statute of limitations?
• How can a sender reduce declaratory-judgment exposure?
• How did MedImmune lower the threshold for declaratory-judgment actions?
• How did the Trademark Modernization Act strengthen demand letters?
• How does a demand letter affect a willfulness finding?
• How does consumer sophistication affect a confusion analysis in a demand exchange?
• How does Federal Rule of Evidence 408 protect settlement discussions?
• How do the facts change what kind of demand letter is appropriate?
• How should a recipient handle evidence of actual confusion it possesses?
• How should a recipient test the validity of the sender's mark?
• How should a sender assess likelihood of confusion before writing?
• How should a sender soften a demand letter to a sympathetic recipient?
• How should a substantive reply to a demand letter be structured?
• Is ignoring a cease-and-desist letter ever the right choice?
• Is parody still a strong trademark defense after Jack Daniel's?
• Must a recipient meet the deadline set in a cease-and-desist letter?
• Should a demand letter make a monetary demand?
• What affirmative defenses belong in a recipient's inventory?
• What are a demand-letter recipient's options?
• What are the two drafting errors to avoid in a demand-letter reply?
• What does it mean that a demand letter builds a record?
• What does the front-page test ask?
• What four jobs does a trademark demand letter perform?
• What geographic defenses can a demand-letter recipient raise?
• What is a coexistence agreement and when does it make sense?
• What is a crowded field argument and why is it effective?
• What is a trademark cease-and-desist letter?
• What is classic descriptive fair use and who bears the burden?
• What is nominative fair use?
• What is the correct posture for a recipient of a cease-and-desist letter?
• What is the declaratory-judgment trap for a trademark demand letter?
• What is the difference between a strong claim and a strong letter?
• What is the Octane Fitness standard for exceptional-case fees in trademark cases?
• What is the risk of asserting state-law claims in a demand letter?
• What is trademark bullying?
• What Lanham Act claims can a trademark demand letter assert?
• What makes a demand letter read as a bluff?
• What privilege and ethics issues arise from using a trademark investigator?
• What remedies give a trademark demand letter its bite?
• What should a recipient negotiate for if it decides to comply?
• What should a sender confirm about its own trademark rights first?
• What should a trademark demand letter actually ask for?
• What should a trademark owner investigate before sending a demand letter?
• What should you do in the first 72 hours after receiving a cease-and-desist letter?
• What statutory damages are available for counterfeiting and cybersquatting?
• What tone should a reply to a cease-and-desist letter take?
• What weaknesses should a sender audit in its own mark before enforcing?
• When is a flat refusal to a cease-and-desist letter appropriate?
• When should a recipient file a declaratory-judgment action?
• Why can asking for too much in a demand letter backfire?
• Why does a sender who understands the recipient's side write a better letter?
• Why does venue matter even at the demand letter stage?
• Why do most trademark disputes turn on the demand letter stage?
• Why is a coexistence agreement often better than winning?
• Why is an injunction usually more valuable than damages in a trademark case?
• Why is credibility the only currency a demand letter has?
• Why is evidence of actual confusion so valuable?
• Why is the sender's prosecution history valuable to a recipient?
• Why must a sender confirm seniority before accusing anyone?
• Why should a demand-letter recipient check its insurance?
• Why should a recipient check PACER before responding to a demand letter?
• Why should a recipient institute a litigation hold immediately?
• Why should a sender investigate the target before writing?
• Why shouldn't a demand letter claim dilution unless the mark is genuinely famous?