Responding to a Trademark Claim

Common situations.

• A business receives a cease-and-desist letter about its name.
• A seller's listings are removed from a marketplace after a brand owner's complaint.
• A company's trademark application is opposed at the TTAB.
• A small business is sued in federal court by a larger company with a similar mark.

Ten steps.

1. Note the deadlines. A letter may demand a response by a date that has no legal effect, but a lawsuit and a TTAB proceeding do. In federal court, an answer is generally due 21 days after service (Fed. R. Civ. P. 12(a)). At the TTAB, the institution notice sets the answer deadline. Marketplaces set their own appeal windows.
2. Preserve evidence. Keep records of how and when you adopted and used the name, your clearance searches, and any communications showing confusion or its absence.
3. Document first use. Gather dated evidence of your first use in each place and for each product or service, such as invoices, ads, website archives, and signage. Priority often decides the case.
4. Assess the other side's rights. Check the USPTO record (registration date, goods and services, Section 8 and 15 filings), the Texas Secretary of State's records, and evidence of actual use. A registration more than five years old may be incontestable, but it can still be challenged on limited grounds such as genericness, functionality, abandonment, or fraud (15 U.S.C. § 1064(3)).
5. Assess confusion honestly. Compare the marks, the goods or services, customers, and marketing channels under the Fifth Circuit's digits of confusion. Evidence of actual confusion matters most. See Likelihood of Confusion in the Fifth Circuit.
6. Check insurance. Commercial general liability policies often exclude trademark infringement, but many cover infringement of trade dress or slogans in the insured's advertisements as "advertising injury." Notify the carrier promptly and read the policy's exclusions.
7. Consider the defenses. Descriptive or nominative fair use, parody that is not used as a brand, the other side's delay or acquiescence, abandonment, and genericness may apply. See Defenses in Trademark Cases.
8. Choose a response. Options include a measured denial with reasons, a coexistence agreement defining each party's market, a change to logos or trade dress, or a planned transition to a new name with a reasonable phase-out period.
9. Consider going on offense. A business facing a real and immediate threat of suit may file for a declaratory judgment of noninfringement, which lets it choose the court. A petition to cancel a weak or abandoned registration may also shift leverage.
10. Respond in writing, carefully. Avoid admitting confusion or bad faith. Ignoring a letter does not make the claim go away, and the letter can later be offered as evidence that you knew of the other side's mark.

If your marketplace listings were removed.

Marketplaces act on brand owners' complaints under their own policies. Follow the platform's appeal process, provide evidence that your goods are genuine or that your use does not infringe, and keep records. Reselling genuine goods bought from the brand owner is generally lawful under the first-sale doctrine, so long as the goods are not materially different and are not presented as sponsored by the brand owner.

Sources.

• 15 U.S.C. § 1064(3).
• Fed. R. Civ. P. 12(a).

This guide is general information, not legal advice. Law checked through October 20, 2026. See the Disclaimer.