Trademark Cease and Desist Letter
A trademark cease and desist letter can be an alarming communication to receive. But before you panic, realize that a cease and desist letter does not mean that your business is being sued. However, the wrong response could set into motion a costly lawsuit that can take a heavy financial toll on your company.
On the other side, trademark cease and desist letters are often effective tools in preventing the misuse of a brand. But how you send the cease and desist letter will play a large role in determining the response you receive. Understanding both sides of the trademark cease and desist letter is crucial to keeping you and your company out of the courtroom.
A trademark is a word, symbol, or design that is used to signify the source of products or services. Anything from a catchphrase to a scent can qualify as a trademark, provided the trademark is not generic or descriptive.
Trademarks can be federally registered with the United States Patent and Trademark Office (USPTO). The registration process involves submitting an application along with an application fee. The application must either allege a bonafide intent to use the trademark or provide proof that the trademark is currently in commercial use. Trademark applications take about four months to be processed by an examining attorney. Once your application is approved, your trademark will be published for opposition for 30 days. During this period, other trademark owners can come forward to file a trademark opposition against the application if they think it constitutes infringement of their trademark.
If no trademark owners contest the application during this time, your trademark will be successfully registered. Once the registration process is complete, it is solely your responsibility to monitor the usage of your trademark and to act swiftly against any infringing activity. After registration the trademark can be cancelled if a third party files a trademark cancellation which is very similar to an opposition.
Unregistered trademarks are still afforded some degree of protection by common law trademark rights. These protections typically are limited to specific geographic regions. But common law trademark rights can be difficult to enforce. You are also less likely to receive damages in a common law trademark lawsuit. You should therefore prioritize registering your trademark with the USPTO.
What is a Trademark Cease and Desist Letter?
A cease and desist letter tells someone to stop doing something. For trademarks, it alerts somebody they are infringing on a protected trademark and orders them to cease all trademark infringement immediately. A cease and desist letter carries the threat that failure to comply with the demands will result in the filing of a trademark lawsuit.
Oftentimes, a cease and desist letter will provide an arbitrary deadline for how long the recipient will have to respond (typically ten days). No matter what deadline is stated in the letter, it is advisable to seek legal advice as soon as possible to avoid any further legal action being taken against your company.
Cease and desist letters tend to differ in tone and urgency. If the person sending the letter believes they have a strong case against you, the letter will likely be more demanding and aggressive in its demeanor. The weaker the case, the more likely the sender will be open to negotiation. You will therefore need to adjust your response accordingly.
Monitor Your Trademark
The USPTO will not enforce your trademark rights for you, so you will need to be diligent about safeguarding your trademark. While this can be a daunting task, there are several proactive steps you can take to monitor your trademark:
- Set up a Google alert: A Google Alert is a free tool that may let you know about unauthorized uses of your trademarks. This tool can be useful in spotting infringement, but can often miss violations in social media posts. For this reason, you should not rely solely on Google Alerts to monitor your brand.
- Check the USPTO filings regularly: You can keep an eye out for recent filings to ensure nobody is attempting to register a similar trademark. Our experience is that jumping on infringements immediately leads to the best results.
- Subscribe to a trademark monitoring service: Because monitoring your trademark can be such a time-consuming task, monitoring it yourself may not be realistic. For all important trademarks we recommend that our clients have us set up a trademark watch which will notify us any time a similar trademark is filed.
Failing to monitor your trademark diligently or enforce your trademark rights can severely weaken the value of your brand. The first step when spotting infringement is to send a cease and desist letter to the infringing party.
The Importance of Policing Your Trademark
It is important to enforce your trademark rights. Failing to enforce your trademark rights can result in significant damage to your company’s reputation. While it might be tempting to let minor infringements slide, this could send the signal that you are not serious about protecting your rights. Sending a cease and desist letter can help you obtain an early resolution to an infringement case without pouring money and time into a lawsuit.
When To Send a Cease and Desist Letter
The main question courts consider when determining if infringement has occurred is whether or not the use of the trademark in question will cause a likelihood of confusion among consumers.
This means that you could theoretically share an identical trademark with another business, provided the industries are removed enough. For example, consumers are unlikely to believe that a frozen yogurt shop and a tattoo parlor are owned by the same company, even if the brand names are identical.
Of course, there is a limit to this consideration. Ralph Lauren is not likely to take kindly if you open up a Ralph Lauren car wash, for example, even if customers are unlikely to believe the brands are connected. In this case, Ralph Lauren is likely to argue that the use of the trademark is diluting the value of the brand, even if there isn’t a likelihood of confusion.
If you believe your trademark is being infringed upon, you should consult a trademark attorney about whether or not the activity constitutes infringement. You do not want to go through the process of sending a cease and desist letter, only to discover that the recipient of the letter is well within their rights to use the trademark. Worse, you don’t want to find out that you, in fact, are the infringing party. Additionally, the party in question could be protected by common law trademark rights, or exploiting a loophole that allows them to use the trademark. For these reasons, it’s best to consult a trademark lawyer about your best options before initiating any communications with the other side.
How To Send a Trademark Cease and Desist Letter
Sending a cease and desist letter may prevent you from having to invest time and money in costly litigation. A trademark cease and desist letter will typically contain the following information.
- Contact information for both parties
- Proof of ownership of the trademark in question
- Evidence and description of the infringement, including dates
- The specific actions that the infringing party must stop doing, along with a deadline for compliance
- The consequences of failure to comply with the demands in the letter, which will likely be filing a lawsuit
Cease and desist letters can elicit a wide variety of reactions. A cease and desist letter is more likely to garner a positive response if it is sent by a trademark attorney that litigates. Sending the cease and desist letter yourself, or having a lawyer who does not litigate trademark infringement cases send the letter, might convey the message that you are not serious about enforcing your rights.
Responding to a Cease and Desist Letter
While seeing a cease and desist letter with your name on it can be a jolt, it doesn’t necessarily mean you are guilty of infringement. Not all cease and desist letters are sent in good faith. Some trademark owners, for example, overextend their rights in an attempt to bully their competition.
Upon reception of the letter, you should consult a trademark attorney immediately in order to determine your rights in the situation. You have several options on how you can respond to a cease and desist letter and your counsel can advise you on the best path moving forward depending on the circumstances of your case:
- Ignore It: I Unless it is pure spam, we would never recommend ignoring a cease and desist letter. Even if the sender of the letter is only trying to intimidate you into complying with unreasonable demands, it is best to respond because it may avoid a lawsuit.
- Respond: When you respond to a cease and desist letter, you will want to be very calculated in your answer. An off the cuff reply might inadvertently admit liability, so it’s best to have a trademark attorney handle this matter. At this point, you may deny infringing on the trademark or provide proof that you were using the trademark first.
- Start a negotiation: You might realize that you are indeed infringing on an existing trademark. In that case, we will likely suggest that you consider negotiating some sort of agreement. This could include a phase out period to transition to a new trademark. We can also request that the deadline for compliance be extended.
- File a lawsuit: Depending on the strength of your case, you might determine that you acted well within your trademark rights. In that case, you can file for declaratory relief asking for a judge to declare that you have not infringed. If it turns out that the other party is the one that is guilty of infringement, you can decide to go on offense and file a trademark lawsuit of your own. In either case you can ensure that the case happens in the most convenient court.
Next Steps After Sending a Cease and Desist Letter
When a cease and desist letter is not effective in halting the infringement activity, the next step might be to file a trademark lawsuit. After a complaint is filed in court it must be served on the defendant. Thereafter, the defendant will have 21 days to respond if the case was filed in federal court. Typically cases settle before going too far but the litigation phases after a complaint include a discovery period where the parties learn about the other sides case, motions, and trial.