What to Do When You Receive a Trademark Cease and Desist Letter
This blog is a part of my Ultimate Guide to Trademarks. Check it out for more info!
Imagine this. Your new business is booming. Your sales are skyrocketing, your profits are growing, and your brand is beginning to acquire significant goodwill in the marketplace. But then your phone buzzes with a new email, and it’s a letter. From a lawyer. It says your trademark is infringing upon his client’s mark, and if you don’t cease and desist from using the trademark you have poured your blood, sweat and tears into, they will take you to court.
Yikes.
Here’s the deal. Getting a cease and desist letter can be alarming. Essentially, it’s a formal notice from an individual or entity asserting that you’re infringing on their trademark rights and demanding you stop. It’s undoubtedly nerve-wracking, and responding to the letter requires an intricate comprehension of the trademark legal landscape. In order to navigate this terrain, you must understand your rights and the necessary steps to take.
First Steps
If you receive a trademark cease and desist letter, the foremost advice is: don’t panic. Begin by establishing your use history. Were you the first party to use the trademark at issue? If so, you possess a strong case since the foundation of trademark law is built on the principle of ‘first use.’ However, if you weren’t the earlier user, you’ll need to delve deeper into your position.
Analyzing the Claims
A trademark attorney can help you evaluate the “likelihood of confusion” factors – a set of criteria determining whether consumers are likely to confuse one trademark with another – and respond to the cease and desist letter. By highlighting the differences in both the marks and the goods and services offered in connection with the marks, you can present a strong defense by arguing that confusion is unlikely.
Possible Outcomes
An attorney may be able to help you reach one of the following resolutions:
Negotiation
Sometimes, especially if the potential infringer operates in a limited geographical area, the two parties can reach a ‘consent to use agreement.’ For example, imagine the alleged infringer is only using the mark in Florida and Georgia, and the trademark owner doesn’t have substantial sales or operations in those states. An agreement can be created to allow the infringer to use the trademark within Florida and Georgia only. This would allow the infringer to continue using the mark in this limited scope but bars any expansion into other states – especially those where the trademark owner has a significant market share.
Modification
In cases where there’s a partial overlap in goods or services, the infringing party might decide to limit their use to non-conflicting areas. For instance, if the trademark owner sells aromatherapy products and the alleged infringer sells candles alongside home goods and furniture, the infringer might agree to discontinue using the trademark for candles and focus solely on its other product lines.
The Importance of Trademark Registration
A cease and desist letter underscores the significance of having a trademark registration. Owning a registered trademark provides your business with presumptive rights, showcasing to the world your ownership over your mark. This not only offers you significant legal protection but also equips you with the authority to send cease and desist letters if others infringe upon your mark.
Receiving a cease and desist letter isn’t always the end of the world, but it’s crucial to take it seriously. Engaging an attorney ensures you understand your rights and can navigate the situation with knowledge and confidence. Remember, proactive steps, like securing a trademark registration early, can shield you from such predicaments in the future.
