Cease-and-Desist Letters as a Potential Predicate for Personal Jurisdiction over Defendants in Trademark and Related Claims

By Gregory P. Feit

A recent decision from the United States Court of Appeals for the Eleventh Circuit in the case of Frida Kahlo Corp. v. Pinedo[1] provides an interesting reminder of some of the legal principles involved in determining whether a cease-and-desist letter sent to a putative infringer by a trademark holder can serve as the basis for a court’s exercise of personal jurisdiction over the holder in trademark-related litigation filed in the putative infringer’s home state.  This appellate decision also highlights the importance, when evaluating personal jurisdiction, of a fairly nuanced distinction between a standard cease-and-desist letter and one that is allegedly tortious in itself.

Background to the Frida Kahlo Trademark Dispute

The appeal at issue arose out of a dispute over the trademarks of the well-known Mexican artist Frida Kahlo, who died in 1954, and whether the federal district court had personal jurisdiction over the defendants.  The principal plaintiff in the case – Frida Kahlo Corporation (“FKC”), a Panamanian entity with its principal place of business in Florida – claims that it is the legitimate owner of various Frida Kahlo trademarks that were assigned to it, pursuant to agreements in 2005, by defendants Familia Kahlo S.A. de C.V. (“Familia Kahlo”), a Mexican corporation, and Mara Pinedo, the grand-niece of Kahlo and the owner of Familia Kahlo, also based in Mexico (together, “Defendants”).

In or around 2022, FKC contracted with three licensees in Florida for the co-branding, promotion, and publishing of walk-through art exhibitions in the US, including one in Miami, and for the sale of Frida Kahlo-branded phone cases at those exhibitions.  In July 2022, the Defendants, who disputed FKC’s ownership of the assigned intellectual property rights, sent two cease-and-desist letters to the licensees, requesting that they refrain from participating in any business initiative involving use of the name or image of Frida Kahlo.

Shortly thereafter, FKC filed an action against the Defendants in federal district court, seeking defensive declaratory relief concerning trademark rights under the Lanham Act, on the theory that the correspondence to the licensees/business partners in Florida was threatening and false, and also asserting claims for tortious interference with advantageous business relationships under Florida law.[2]  The Florida district court then granted Defendants’ motion to dismiss FKC’s claims, concluding, among other things, that the court did not have personal jurisdiction over the Defendants because, it reasoned, “sending an infringement letter, without more, is insufficient to satisfy the requirements of due process.”

The 11^th Circuit Reversal

On appeal, the Eleventh Circuit disagreed.  It held that the Defendants’ sending of the cease-and-desist letters was sufficient, under the circumstances, to establish personal jurisdiction over the Defendants on the claims involved.

As to the legal framework in play, the Eleventh Circuit noted that personal jurisdiction obtains only if Florida’s long-arm statute provides for jurisdiction over Defendants, and then only if exercising that jurisdiction over Defendants comports with the U.S. Constitution’s Due Process Clause.

Regarding Florida’s long-arm statute – which, in broadly similar fashion to other states’ long-arm statutes, relates to non-resident defendants who, personally or through an agent, commit a tortious act within Florida, and where a cause of action arises from that act – the court concluded that Defendants’ allegations satisfied the state statutory requirements, such that the Defendants were subject to Florida’s long-arm statute.

Then, evaluating factors for whether personal jurisdiction over Defendants would comply with due federal due process requirements, the court observed first that the cease-and-desist letters had been sent into Florida and had threatened litigation based on allegedly false assertions of trademark ownership.  Accordingly, the court found, Defendants had directed conduct into Florida that served as the basis for and directly gave rise to Plaintiffs’ claim of tortious interference.

Second, the court held that Defendants had purposefully availed themselves of the privilege of conducting activities in Florida by sending the letters.  The court rejected Defendants’ arguments that the letters should be characterized as “informative” and that prior precedent instructed that a cease-and-desist letter, alone, was insufficient to demonstrate purposeful availment.  Instead, the court explained that the letters here were allegedly tortious themselves and had been sent into Florida for the purpose of preventing an exhibition and other business activities in Florida; further, the court said that cases like Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt, Inc., in which the Federal Circuit Court of Appeals had concluded that a cease-and-desist letter alone was not sufficient to establish personal jurisdiction in the patent litigation context,[3] have been called into question even in the Federal Circuit, with more recent decisions arguably concluding that communications threatening suit or proposing settlement can be sufficient to establish personal jurisdiction.

Third, the court found that the exercise of personal jurisdiction over the Defendants comported with “traditional notions of fair play and substantial justice.”

Consequently, the Eleventh Circuit reversed the district court’s dismissal of the case on personal jurisdiction grounds, and sent the case back to the district court for further proceedings.

Analysis & Takeaways

Research confirms that many courts continue to hold that the sending of a cease-and-desist letter by one out-of-state or foreign party will be, standing alone (and in the absence of, say, separate or intertwined commercial activities directed at the forum), insufficient to confer jurisdiction over that party in a recipient party’s defensive trademark declaratory judgment claim against that sending party in the recipient’s forum state (e.g., where the putative infringer seeks a declaration clarifying that its use of a mark was non-infringing).[4]  Such letters, these courts have fairly consistently maintained, do not amount to legally sufficient, purposefully directed enforcement activities directed into the forum.

As Frida Kahlo Corp demonstrates, however, the mailing of a cease-and-desist letter, even without more, can suffice to create personal jurisdiction where the sending of the letter itself into the forum state supports the basis for a tortious interference-type claim.

Frida Kahlo Corp. is not alone in so holding.  In 2010, the court in Athletic Training Innovations, LLC v. L.A. Gear, Inc.,[5] similarly found that a defendant’s sending a cease-and-desist letter to the customers of a putatively trademark-infringing Louisiana plaintiff, while knowing that such letters contested the Louisiana-conducted sales and business activities of a Louisiana company, was sufficient to create personal jurisdiction over the defendant “for the separate tort of intentional interference with Plaintiff’s business relations.”

Trademark holders and their counsel should be cognizant of this distinction.  The sending of a cease-and-desist letter alone to a suspected infringer in a different forum will very likely be deemed insufficient for that suspected infringer to establish personal jurisdiction over the holder in a defensive declaratory judgment proceeding in the infringer’s home state.

But the sending of a cease-and-desist letter to the suspected infringer’s business partners or licensees, when such correspondence could have the effect of interfering with the suspected infringer’s business in the forum state, very well could be sufficient in itself to subject the holder to personal jurisdiction in that state on tortious interference-type causes of action.

[1] 2026 WL 1045144 (11th Cir. Apr. 17, 2026).

[2] Plaintiffs also asserted a copyright infringement claim, which was later dropped from the lawsuit.  This article does not comprehensively address all of the various legal issues, claims/defenses, and arguments in the litigation, but rather focuses specifically on the cease-and-desist and personal jurisdictional points.

[3] 148 F.3d 1355 (Fed. Cir. 1988).

[4] E.g., J.M. Smucker Co. v. Promotion in Motion, Inc., 420 F. Supp. 3d 646, 658 (N.D. Ohio 2019) (“Courts have routinely found that the sending of cease and desist letters, standing alone, is insufficient to confer jurisdiction over a declaratory judgment claim.”); cf. Fort Knox Music, Inc. v. Baptiste, 139 F. Supp. 2d 505, 511 (S.D.N.Y. 2001) (copyright declaratory judgment claim; “The Second Circuit has been clear that a cease and desist letter alone is insufficient to confer jurisdiction under section 302(a)(1) [of New York’s long-arm statute].”).

[5] No. CIV.A. 10-1524, 2010 WL 4103309, at *3-6 (E.D. La. Oct. 18, 2010).

This article is intended as a general discussion of these issues only and is not to be considered legal advice or relied upon. For more information, please contact RPJ Attorney Gregory Feit who counsels clients on employment law, litigation, arbitration, negotiation, and trial advocacy. Mr. Feit is admitted to practice in New York.