Pre-Suit Trademark Demand Letters
Preparamos cartas de reclamación en inglés y en español, con cifras basadas en la ley.
A demand letter tells an infringer what the infringement has cost and what it will take to settle: a payment, a phase-out, an accounting, or a signed agreement. Done well, it resolves the claim without a lawsuit. Done badly, it gives the other side a reason to sue you first, or to ask for its fees.
Received a demand instead?Responding to a Trademark Demand Letter →
A demand letter puts a price on the dispute
A cease and desist letter tells an infringer to stop. A demand letter goes further. It states what the infringement has cost you and what it will take to resolve the claim without a lawsuit: a sum of money, a deadline to phase out the mark, an accounting of sales, the destruction of stock, or a written agreement that governs the future.
Brand owners send a demand letter when stopping the use is not enough. The infringer may have sold for months, diverted customers, or damaged your reputation with poor-quality goods. You may want to be paid for that, or you may be willing to give the other side time to rebrand in exchange for firm commitments. A demand letter frames that negotiation on your terms before either side spends money on litigation.
Because it names a number, a demand letter needs more preparation than a stop letter. The figure must be grounded in the remedies a court could actually award, and the evidence behind it must exist before the letter goes out. A number the recipient can take apart in an afternoon weakens your position for the rest of the case.
When a demand letter fits
- The infringer has made measurable sales under your mark, or a confusingly similar one
- You can document lost sales, diverted customers, or corrective advertising costs
- You would accept a negotiated exit, such as a phase-out or rebrand, rather than an immediate stop
- The goods are counterfeit, which opens statutory damages under 15 U.S.C. § 1117(c)
- You are prepared to file suit if the letter is ignored
Cease and desist letter or demand letter
| Cease and desist letterStop the use | Demand letterStop, and resolve the claim on stated terms | |
|---|---|---|
| Main ask | Stop using the mark, often by a date | Payment, a phase-out schedule, an accounting, destruction of goods, and a signed agreement |
| Evidence needed first | Your rights and the infringing use | Also the infringer's sales, your losses, and a reasoned basis for the figure |
| Settlement rules | Usually not a settlement offer | Often treated as a compromise offer under Federal Rule of Evidence 408 and Fla. Stat. § 90.408 |
| Typical response | Compliance, refusal, or a request for time | A counteroffer, a request for documents, or an insurer's involvement |
| Notice and willfulness | Gives actual notice of your registration | Same, and documents what the infringer knew from that date |
| Declaratory judgment risk | Present if the letter threatens suit | Present, and often higher, because a specific demand shows a live controversy |
◆ marks rows where the two letters differ. Many matters use both: a short stop letter first, then a demand once sales information is in hand.
What Rule 408 and § 90.408 protect, and what they do not
A demand letter that offers to resolve a disputed claim usually doubles as a settlement communication. That status limits how the offer can be used in court. It does not make the letter confidential.
| Question | Federal Rule of Evidence 408 (federal court) | Fla. Stat. § 90.408 (Florida state court) |
|---|---|---|
| What is covered | Offering, promising, or accepting valuable consideration to compromise a claim, and conduct or statements made during compromise negotiations | An offer to compromise a claim, and relevant conduct or statements made in negotiations about the compromise |
| Needed for protection | A claim disputed as to validity or amount | A claim disputed as to validity or amount |
| Barred use | To prove or disprove the validity or amount of the claim, or to impeach by a prior inconsistent statement or contradiction | To prove liability, absence of liability, or the value of the claim |
| Allowed uses | Another purpose, such as proving bias or prejudice, negating a claim of undue delay, or proving an effort to obstruct a criminal investigation | The statute lists only the barred purposes; courts admit settlement evidence for other purposes in some cases |
The claim must be disputed
Both rules protect compromise of a claim disputed as to validity or amount. A first letter that simply demands payment, before the recipient has contested anything, may not qualify in every court. Do not assume a label makes a document inadmissible.
FRE 408(a) · § 90.408It is not a confidentiality agreement
The rules govern admissibility at trial. The recipient can still forward the letter to its insurer, its supplier, or a marketplace, or post it online. Write every demand as if a judge, a customer, and a journalist will read it.
Rule of evidence onlySeparate notice from the offer
Facts you want to prove later, such as the date the infringer learned of your registration, belong in a stand-alone notice. Keep the dollar offer and the give-and-take in a separate communication marked as a settlement communication.
15 U.S.C. § 1111Notice matters for money. If you have not marked your goods with ® or "Registered in U.S. Patent and Trademark Office," 15 U.S.C. § 1111 bars profits and damages unless the defendant had actual notice of the registration. A dated letter that identifies the registration supplies that notice.
Gather the evidence before you name a number
A demand is only as strong as the proof you could put in front of a court. We assemble the following before drafting, and we note the gaps so the figure reflects them.
First use and continuous use
Dated invoices, catalogs, website archives, and photographs that show when and where you began using the mark, and that you have used it since. Priority often decides the case.
Federal and Florida registrations
Certificates, status printouts, and any Florida registration under Chapter 495. Check that the owner of record matches the party sending the letter, and that the goods listed cover the infringer's goods.
Sales and market data
Revenue by product, region, and channel before and after the infringement began. A drop that tracks the infringer's launch is the starting point for a lost-profits figure.
Evidence of actual confusion
Misdirected emails, calls, returns, reviews, and social media comments. Save each one with the date, the channel, and the original file, not a cropped screenshot.
The infringer's sales and profits
Marketplace listing counts, review volume, test purchases, import records, and public filings. Under § 1117(a) you prove only the infringer's sales; the infringer must prove its costs.
Marketing and corrective costs
Advertising spend that built the mark, and any spend to correct confusion: notices to customers, extra ads, or staff time handling misdirected complaints.
What the infringer knew
Prior dealings, earlier letters, copied product photos, or a former distributor relationship. Knowledge bears on profits, enhanced damages, and fees.
Your preservation steps
Once you are considering a claim, your own records must be preserved too. See Litigation Hold and Preservation Notices.
For counterfeit goods, a documented test purchase and side-by-side comparison with genuine goods usually comes first. See Counterfeiting Investigations.
How the amount is built from Lanham Act remedies
A credible demand starts from what 15 U.S.C. § 1117 allows a court to award, adjusted for the strength of the evidence and the cost and time of getting there. Our Damages Evaluations page explains each remedy in more depth.
| Remedy | Source | What you must show | How it figures in a demand |
|---|---|---|---|
| Infringer's profits | § 1117(a) | The infringer's sales; the infringer must prove costs and deductions. Willfulness is not a precondition, but intent is a highly important consideration (Romag Fasteners v. Fossil, 2020). | Often the largest item. Reaches only the named defendant's profits, not those of its separate affiliates (Dewberry Group v. Dewberry Engineers, 2025). |
| Your actual damages | § 1117(a) | Lost sales, price erosion, harm to reputation, corrective advertising, supported by evidence | The court may enter judgment for up to three times actual damages, as compensation and not a penalty |
| Costs of the action | § 1117(a) | Prevailing on the claim | A small but certain item |
| Attorney's fees | § 1117(a) | An exceptional case, judged on the strength of the positions or the manner of litigation | Leverage only where the facts are strong; not a given |
| Treble profits or damages, plus fees | § 1117(b) | Intentional use of a mark known to be counterfeit, absent extenuating circumstances | Applies to counterfeits, not ordinary infringement |
| Statutory damages | § 1117(c) | Use of a counterfeit mark; the owner elects before final judgment | $1,000 to $200,000 per counterfeit mark per type of goods or services; up to $2,000,000 if willful |
| Cybersquatting damages | § 1117(d) | A violation of § 1125(d)(1) | $1,000 to $100,000 per domain name, in place of profits and damages |
Profits and statutory-range worksheet
A rough check on the numbers you have, not a valuation. It applies the statutory burdens and ranges only.
Courts do not award the same dollars twice, and they may adjust a profits award that is inadequate or excessive. The statutory range applies only if the marks are counterfeit, and the owner elects it instead of profits and damages. Willful counterfeiting raises the ceiling to $2,000,000 per mark per type.
Terms a demand typically includes
Money is rarely the only term. The non-monetary terms often matter more to the brand over time, and they are what a court would otherwise order by injunction under 15 U.S.C. § 1116.
Payment
A lump sum, installments with an acceleration clause, or a sum tied to an accounting. State what the payment covers: past infringement only, or also a phase-out period.
§ 1117(a)Phase-out period
A fixed date to stop all use, with intermediate dates for packaging, signage, domain names, and social media handles. A sell-off of existing stock, if allowed, should be capped by quantity and channel.
Negotiated termDestruction or recall
Destruction of labels, packaging, and inventory, or recall from distributors, with a sworn certificate. Courts may order delivery up and destruction of infringing articles.
15 U.S.C. § 1118Accounting
A sworn statement of units sold, revenue, and channels, with supporting records. It tests the figure and sets the base for any payment tied to sales.
Supports the profits figureConsent agreement
An undertaking not to oppose or challenge your registrations, to withdraw conflicting applications, and to assign or abandon the infringing marks and domains.
USPTO filingsCoexistence terms
Where both sides can continue, a written division by goods, territory, channel, or presentation, with a duty to cooperate if confusion appears.
Negotiated termCompliance and breach terms
Proof of compliance by a date, an agreed sum or other remedy for breach, Florida governing law and a Miami-Dade or Southern District of Florida forum, and a stipulated injunction if the dispute is already in court. For foreign recipients, add terms covering their home-market filings and online listings that reach the United States.
EnforceabilityWhen to send, and what deadlines to set
Delay costs leverage. The deadline in the letter should be long enough to be reasonable and short enough to show you mean it, and you should be ready to act when it passes.
- Weeks 1–2Evidence and valuationCollect the proof, test-purchase if needed, and model the remedies.
- Week 2PreservationIssue your own internal hold, and decide whether to send a preservation demand.
- Week 3Letter goes outBy courier and email, to the business and any registered agent.
- Response windowDeadline to answerWe usually allow two to three weeks; less for counterfeits or ongoing harm.
- NegotiationExchange of termsDocuments, an accounting, and counteroffers, with a firm end date.
- After the deadlineSign or sueA signed agreement, or a complaint already drafted and ready to file.
Delay can weaken a request for an injunction
Since the Trademark Modernization Act of 2020, 15 U.S.C. § 1116(a) gives a plaintiff a rebuttable presumption of irreparable harm on a showing of likely infringement. Courts treat diligent efforts to resolve a dispute as excusable, but a long gap after talks end can rebut the presumption. Keep negotiations short and documented.
§ 1116(a)A specific demand can prompt a suit against you
Under MedImmune v. Genentech (2007), courts ask whether all the circumstances show a substantial controversy. A demand for money with a threat of suit can let the recipient file first for a declaratory judgment in its home court. If forum matters, file first or send the letter with a draft complaint ready.
28 U.S.C. § 2201Florida points that change the math
Florida claims often travel with the Lanham Act claims. Some add leverage. One can cost you money if the case goes badly. See Florida Unfair Competition for the full picture.
In a civil action under the Florida Deceptive and Unfair Trade Practices Act, the prevailing party, after judgment and exhaustion of appeals, may receive reasonable attorney's fees and costs from the non-prevailing party. The award is discretionary, but a brand owner that threatens or pleads a weak FDUTPA claim and loses can be ordered to pay the defendant's fees.
The owner of a Florida-registered mark may sue for infringement and seek an injunction, the infringer's profits, damages up to three times actual damages, destruction of infringing goods, and reasonable attorney's fees to the prevailing party according to the circumstances. Profits or damages for labels and packaging require knowledge that the imitation was intended to confuse.
The owner of a mark famous in Florida can enjoin a later use likely to dilute it. Other Chapter 495 remedies require willful intent and a Florida registration. See Florida Trademark Dilution.
Florida state courts have held that a duty to preserve generally arises from a contract, a statute, or a discovery request, so a letter alone may not create one in state court. Federal courts look to whether litigation was reasonably foreseeable. Either way, a written request fixes the date the recipient was told what to keep.
We assess whether a FDUTPA count adds enough to justify its fee risk before it appears in any letter. A Florida registration can be worth obtaining for its own remedies; see Florida State Trademarks.
Where a demand crosses the line
A demand to pay money in exchange for not filing a lawful civil claim is ordinary litigation practice. Trouble starts when the leverage comes from something other than the claim.
Florida's extortion statute, Fla. Stat. § 836.05, makes it a second-degree felony to maliciously threaten, in writing or orally, to accuse another of a crime, to injure their property or reputation, or to expose a secret or disgrace, with intent to extort money or compel an act against their will. The Rules Regulating The Florida Bar separately bar a lawyer from threatening criminal charges, or disciplinary charges, solely to obtain an advantage in a civil matter (Rule 4-3.4(g) and (h)).
Florida's litigation privilege protects many pre-suit communications, but the protection for pre-suit letters is not absolute and courts have reached different results. An abuse-of-process claim, by contrast, generally concerns misuse of court process after it is issued, so a letter alone rarely supports one. The practical risks of an overreaching demand are less about tort liability and more about credibility: a letter that overstates the claim becomes the recipient's exhibit on fees, bad faith, or a declaratory judgment.
We do not put these in a demand
- Threats to report the recipient to police, prosecutors, or a licensing board as leverage for payment
- Threats to publicize unrelated private matters
- Demands for sums with no connection to any remedy the law allows
- Statements that every listing is "counterfeit" when the goods may be genuine or gray market
- Threats to sue people or entities with no plausible liability
Reporting counterfeits to Customs or a marketplace is legitimate. Offering not to report in exchange for money is not.
How we prepare a demand letter
Robert H. Thornburg leads Lanham Act and counterfeit enforcement; Susan J. Latham leads matters involving false advertising and copyright; James R. Leahy handles e-commerce and technology disputes; Melissa Dangond Crews works with Spanish-speaking clients and on parallel TTAB and domain proceedings.
- Step 1Conflict check and factsParties, marks, channels, and what you want the outcome to be.
- Step 2Rights reviewOwnership, priority, registrations, and any weak points the other side will find.
- Step 3Evidence fileSales, confusion, test purchases, and the infringer's footprint.
- Step 4ValuationA remedy-by-remedy range, with an accountant where the numbers warrant one.
- Step 5Terms and strategyOpening figure, walk-away point, and non-monetary terms.
- Step 6Letter and noticeIn English or Spanish; other languages through qualified translators.
- Step 7Follow-throughNegotiation, a signed agreement, or a complaint ready to file.
For Latin American and European infringers, we coordinate with counsel in the recipient's country where enforcement abroad may be needed. See Latin American Brands and European Brands.
Five common mistakes in trademark demand letters
Most weak demands fail for the same reasons: the number is not supported, the letter says too much, or there is no plan for what happens next.
Naming a number with no basis
A round figure picked for effect invites a refusal and tells the other side you have not done the work. It can also be quoted back to a court on a fee motion.
§ 1117(a)Build the figure from profits, damages, and, for counterfeits, statutory damages, and be ready to explain each part.
Mixing admissions with the offer
Concessions about weaknesses, or facts you want to prove later, end up in the same letter as the dollar offer, which muddies what can be used in court.
FRE 408 · § 90.408Keep notice of your rights in one document and the compromise discussion in another.
Adding a FDUTPA threat by reflex
A FDUTPA count adds a fee-shifting statute to the dispute. If the claim fails, the defendant may ask the court for its fees.
§ 501.2105Include FDUTPA only when the facts support it and the benefit outweighs the fee risk.
Letting the deadline pass without action
A missed deadline with no follow-up teaches the recipient that your deadlines are soft, and months of silence can weaken a later request for an injunction.
§ 1116(a)Decide before sending what you will do when the deadline passes, and have the complaint drafted.
Forgetting your own records
The sender's duty to preserve can arise as soon as litigation is reasonably anticipated. Brands that keep auto-deleting chats and old site versions hand the other side a spoliation argument.
FRCP 37(e)Issue an internal hold before the letter goes out.
Frequently asked questions
Is a demand letter required before filing a trademark lawsuit?
No. The Lanham Act does not require a pre-suit letter. A letter can still matter: it gives actual notice of your registration, which affects money remedies if your goods are not marked with ®, and it documents what the infringer knew from that date.
Can the recipient use my demand letter against me in court?
An offer to compromise a disputed claim is generally inadmissible to prove the validity or amount of the claim under Federal Rule of Evidence 408 and Fla. Stat. § 90.408. It can be admitted for other purposes, and nothing stops the recipient from sharing it. Write it so you would be comfortable with a judge reading it.
How much should I demand?
Enough to reflect what a court could realistically award on your evidence, including the infringer's profits, your damages, and statutory damages if the goods are counterfeit, with room to negotiate. See Damages Evaluations.
Should I ask for money or just a phase-out?
It depends on the harm and on what you want long term. A short phase-out with a consent agreement and destruction of stock can be worth more than a payment if it removes the conflict for good. Many demands combine both.
Can I demand payment from an Amazon or marketplace seller?
Yes, if the seller is identifiable and the claim is sound. Marketplace complaints remove listings; they do not recover money. A demand letter, or a lawsuit, is how payment is pursued. See Amazon Brand Registry.
What if the infringer is in Mexico, Colombia, or Spain?
A U.S. demand can address sales into the United States. Conduct abroad is governed by local law and local registrations, so we coordinate with counsel in that country when the demand should also cover home-market use.
Does sending a demand letter mean I have to sue?
No, but a threat you do not intend to carry out weakens your position and can still give the recipient grounds to sue you first for a declaratory judgment. Send a demand when you are prepared to follow through.
Will my insurer or the infringer's insurer be involved?
Sometimes. Some business policies cover certain advertising injury claims, so the recipient may tender your letter to its insurer. That can slow the response but may also bring a party able to pay into the negotiation.
Discuss your claim
Send us what you have: your registration numbers, examples of the infringing use, any sales or confusion evidence, and any earlier letters. Tell us whether you want payment, a phase-out, or both.
- Evidence review and a remedy-by-remedy valuation
- Demand letters in English or Spanish
- Settlement, phase-out, and coexistence agreements
- A complaint ready to file if the deadline passes
Prefer to talk first? Call or email, or message us on WhatsApp. Atendemos en español.
- Federal Rule of Evidence 408, Compromise Offers and Negotiations (Cornell LII)
- Fla. Stat. § 90.408, Compromise and offers to compromise (Florida Senate)
- 15 U.S.C. § 1117, Recovery for violation of rights (GovInfo, 2024 ed.)
- 15 U.S.C. § 1111, Notice of registration (Cornell LII)
- Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233 (U.S. Apr. 23, 2020)
- Dewberry Group, Inc. v. Dewberry Engineers Inc. (U.S. Feb. 26, 2025), Gibson Dunn summary
- Fla. Stat. § 501.2105, Attorney's fees (Florida Senate)
- Fla. Stat. § 495.141, Remedies (Florida Senate, 2026)
- Fla. Stat. § 836.05, Threats; extortion (Florida Senate, 2026)
- Litigation Privilege Immunity: For Presuit Communications, It's Not Absolute, The Florida Bar Journal (2018)
- Trademark Modernization Act: Discontinuance and Delay, ABA Section of Litigation
- How trade mark defendants are winning from MedImmune, Pillsbury
General information, not legal advice for your situation. Statutes, rules, and fees as of October 2026. Last reviewed October 28, 2026.