When Should You Send a Cease and Desist for Infringement?

Send a cease and desist letter when you have confirmed you own the right, documented the infringement, decided what you want, and are prepared for the recipient to sue you first. If any of those four is missing, the letter is premature. Most infringement disputes are resolved at the letter stage without a lawsuit, which is why the letter is the workhorse of IP enforcement, but a letter sent on an unregistered copyright, or to a recipient with deeper pockets and a declaratory judgment lawyer on retainer, can cost far more than it recovers. CLP’s IP enforcement and dispute resolution practice sends demand letters only after the checks below are done.

Confirm you own and can enforce the right

Before writing, verify the chain of title. For a trademark, the registration should be in the name of the entity sending the letter, live, and cover goods or services close to what the recipient is selling. If you rely on common-law rights without a registration, be prepared to prove priority of use and the geographic scope of your reputation. For a copyright, check whether the work is registered. A U.S. work cannot be the basis of a lawsuit until registration issues, and statutory damages and attorney’s fees are available only if registration preceded the infringement or came within three months of first publication. A letter that threatens suit on an unregistered work is a threat you cannot immediately carry out, and experienced recipients know it. The timing rules are explained in our post on why registration matters when copyright is automatic. If the work is unregistered, file first, and consider special handling if litigation is likely.

For contractor-created works, confirm a signed assignment exists. Discovering mid-dispute that the freelancer who designed the logo still owns it is a bad moment.

Gather the evidence before the recipient cleans up

Capture the infringement as it exists today: dated screenshots of websites and listings, archived copies of pages, test purchases with receipts and photographs of what arrived, social media posts, app store listings, and domain registration records. If the recipient is a business, pull its corporate registration to identify the correct legal entity and registered agent. Letters often prompt the recipient to change the accused material, and the pre-letter record is what shows what they were doing.

Document your own use as well: first-use dates, sales volumes, advertising spend, and any evidence of actual confusion such as misdirected customer emails or reviews. This supports both the letter and any later claim for damages.

Decide what you want

A letter without a clear objective produces a vague response. The usual objectives are: stop the use entirely; stop within a phase-out period; rebrand or modify to remove the conflict; take down specific content; account for and pay over profits; sign a license going forward; or transfer a domain name. Pick the outcome that solves the business problem, and set the demand accordingly. Demanding everything invites the recipient to refuse everything.

Weigh the risks of sending

Three risks deserve a decision before the letter goes out.

The declaratory judgment risk. A letter that creates a reasonable apprehension of suit gives the recipient standing to file a declaratory judgment action in their home court, asking a judge to rule that they do not infringe. You then litigate on their timetable, in their forum. Softer language reduces but does not eliminate the risk, and sometimes the right answer is to file your own complaint first and send the letter with it. Trademark owners face an extra exposure, a counterattack on their own registration, which we cover in whether to send a trademark cease and desist letter first.

The reputational risk. Letters to individuals, small businesses, fans, or critics are often published, and a heavy-handed letter can draw more attention to the dispute than the infringement ever did. Match the tone to the recipient: a counterfeiter and a hobbyist who used your logo on a fan page warrant different letters.

The admission risk. Statements in the letter about the scope of your rights, your dates of use, or your view of the market are discoverable and binding. Say only what you can prove.

What a cease and desist letter should contain

A demand letter is a short legal document, not an essay:

• Identification of the sender and its rights, with registration numbers and dates.
• A precise description of the recipient’s conduct, with the evidence attached or referenced.
• The legal basis for the claim, stated briefly.
• The specific demands and a deadline for written confirmation.
• A request to preserve evidence.
• A reservation of all rights and remedies.

It should be addressed to the correct legal entity and sent in a way that proves delivery. It should avoid inflated claims of damages, personal attacks, and threats of criminal prosecution, which in some jurisdictions are improper when used to gain advantage in a civil matter.

Alternatives that may work better

A letter is not always the first move. For online infringement of copyrighted content, a DMCA notice to the platform is faster and does not require the infringer’s cooperation; our post on how a DMCA takedown works explains the process and its limits. Marketplaces run their own trademark and counterfeit complaint programs. Domain name disputes have the UDRP. For a conflicting trademark application, an opposition at the Trademark Trial and Appeal Board may be the right tool, as described on our trademark enforcement and TTAB proceedings page. And for a recipient with whom you have or want a relationship, a phone call from a principal before any letter can resolve the issue without lawyers.

What happens after the letter

Most recipients respond in one of four ways: comply, negotiate, respond with a denial, or stay silent. Each has a planned next step. Compliance should be confirmed in a written agreement with a release. Negotiation leads to a coexistence agreement, a license, or a phase-out. A reasoned denial deserves evaluation, since the recipient may have a point. Silence after a second letter means deciding whether to file. Our post on what to do when you receive a cease and desist letter shows how the recipient’s counsel will analyze your letter, which is a useful lens for writing it.

If you have found someone using your brand, content, or technology, a consultation with Capitol Law Partners can confirm your rights and set the enforcement plan before any letter is sent. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our IP enforcement and demand letters page or schedule a consultation.