How to Respond to a Trademark Cease and Desist Letter

Guidance for New York Business Owners

When a trademark cease and desist letter shows up in your inbox or mailbox, it can feel like a punch to the gut. You’ve poured time, money, and energy into building your business in New York. 

You picked your name carefully, grew your customer base, and created something real. Now someone claims you're infringing on their trademark. Whether you're running a coffee shop in Rochester or an eCommerce site from your home, this kind of legal threat can feel overwhelming.

At Horn Wright, LLP, our trademark attorneys help businesses across New York take a steady, informed approach. You don't have to handle this alone. With the right legal strategy, you can protect your business, respond the right way, and avoid unnecessary damage. 

Understand What a Cease and Desist Letter Demands

Trademark cease and desist letters often arrive out of the blue. But they serve a specific purpose: to formally notify you of a potential trademark conflict. The sender believes you are using a name, slogan, or logo that’s too close to their registered mark. They’re asking, or demanding, you stop using it.

In New York State, these letters are common among businesses that grow quickly online or locally. For example, a boutique storefront might receive one after launching a brand that mirrors a name used elsewhere. Even if you’ve never heard of the other company, they might have registered their trademark before you.

The letter typically includes:

• A description of the registered trademark
• Claims of infringement
• A request or deadline to stop using your branding
• Possible threats of legal action

It’s not a lawsuit. It’s a clear warning. You need to respond carefully and strategically.

Don’t Panic, But Don’t Ignore It

Getting a legal notice is upsetting. That’s a normal reaction. But the worst thing you can do is nothing. Ignoring the letter can turn a manageable issue into a lawsuit. Instead, pause and take stock.

Business owners often feel pressure to react quickly. But emotional responses or rushed replies can cause more harm than good. Take a deep breath. Step back. Understand the letter fully before making a move.

You’re not alone in this. Many New York businesses face similar letters, and there are clear steps you can take to protect your rights.

Read Every Detail, Then Verify the Claim

Start by reading the entire letter. Don’t skim it. You need to know exactly what’s being claimed. Focus on:

• The sender’s legal name and address
• What trademark they claim to own
• What they believe you’ve done to infringe
• What they’re demanding

Next, check whether the trademark is registered and valid. Use the USPTO TESS database or the New York Department of State Entity Search. These platforms show what trademarks are active and when they were filed.

Sometimes businesses receive letters from companies that never registered their trademark or operate in a totally different market. For example, a local juice bar might get challenged by a tech firm with a similar name but unrelated service.

Trademark law focuses on whether the names cause confusion in the same market. If your business doesn’t operate in their space, it’s possible the claim is weaker than it seems.

Search the Trademark to Check Its Scope

Once you know what trademark they’re referring to, look deeper. The USPTO’s Trademark Electronic Search System helps you find:

• The class of goods or services they registered
• The geographic area they serve
• The current status of the trademark

This matters. If their mark is registered only for clothing, and you run a landscaping service in Rochester, the industries may be too different for confusion. Likewise, if they serve customers only on the West Coast and your market is New York, their claim may not hold.

Trademark protection is specific. It doesn’t block every use of a word. It protects specific uses in specific sectors.

Stop Any Harmful Actions Right Away

If there’s even a small chance that the claim could be valid, you may want to hit pause. That could mean taking down certain marketing materials, hiding a product listing, or disabling a webpage.

You’re not admitting guilt. You’re showing that you take the matter seriously. Businesses often choose this short-term step while they review the situation with legal counsel.

This move helps reduce risk. It can also give you more time to craft the right response.

Get Legal Counsel Before Responding

Trademark law is dense. Every word in your response matters. That’s why you should never answer a cease and desist letter on your own. Anything you say could be used against you if the dispute escalates.

An experienced trademark attorney can help you:

• Evaluate the strength of the opposing claim
• Determine your rights based on use, timing, and geography
• Draft a professional and non-admitting response
• Propose alternatives or settlements if needed

New York attorneys familiar with local courts, business laws, and regional industry trends can give you an edge. Don’t guess. Get clear advice. 

Weigh Your Options: Settle, Rebrand, or Defend

Once you understand the situation and speak with counsel, you’ll have choices. Each path carries different implications. Consider:

• Settling: You might agree to stop using the mark or tweak it slightly. This can avoid litigation.
• Rebranding: If the name isn’t essential to your identity, rebranding might make sense. It clears the legal path.
• Defending: If the claim is weak or the other party has no registration, you can push back.

We’ve seen food trucks rebrand to avoid long fights. We’ve also seen startups defend their names when they had strong prior use. Your situation, your market, and your goals will shape the right move.

Document Everything from Day One

Documentation builds your defense. If you used the name first, or in good faith, you’ll need proof. Start gathering:

• First use dates
• Sales receipts
• Product packaging
• Website records
• Advertising timelines
• Social media posts

Businesses have strengthened their positions just by keeping good records. Even screenshots or customer reviews can help show when and how you built your brand.

Watch for Future Conflicts Before They Start

After this issue is behind you, use it as a learning moment. Trademark conflicts are avoidable with the right habits in place. Make it routine to:

• Check trademarks before launching new names or products
• Monitor USPTO filings for similar names
• Set up Google Alerts for your business name

Protecting your brand doesn’t stop with registration. It requires vigilance, especially if you’re growing beyond your local market. A business with an expanding online store can run into new competitors quickly. Stay ahead by planning smarter.

Final Takeaway: Respond Thoughtfully and Protect Your Business

A trademark cease and desist letter may feel like a threat. It’s also an opportunity to secure your brand. Whether you need to defend your name, pivot your branding, or clarify your legal position, you don’t have to do it alone. 

Business owners across New York face these moments. What matters most is how you respond. Stay calm, take it seriously, and get legal advice that keeps your business moving forward.

At Horn Wright, LLP, we help businesses throughout New York protect what they’ve built. If you're unsure how to move forward after receiving a trademark letter, our team is ready to step in, answer your questions, and help you respond with confidence. Get in touch with us today to arrange your free case review.