Receiving a trademark cease and desist letter or infringement notice can be an unsettling event. There are many circumstances under which you may receive one, but they all have one common thread – if the allegations in the letter are true, they can sometimes be devastating for a business. That being said, before becoming too concerned, or taking any action yourself to respond to the notice you received, it is important to consider the following and contact an attorney.
Why did I receive a cease and desist letter?
There are several reasons, but the most likely is that another individual or business believes that your trademark infringes upon their own. Naturally, you may disagree with this contention, however, trademark law and disputes are matters decided by very specific facts, not opinions. It’s important to remember this as you consider a response. Also note that some cease and desist letters may simply be an abusive tactic practiced by another trademark owner. They may hope to intimidate or frighten other trademark holders in order to gain an unfair advantage in the marketplace. Even if you believe this is the case, the need for a measured response supported by facts remains critical.
Does receiving a trademark infringement notice mean that I am being sued?
A cease and desist letter is not a notice of a lawsuit. Many times a trademark owner who perceives an infringement on their mark starts the process by sending a cease and desist letter in the hopes that a settlement can be reached. This is because obtaining a settlement in a trademark infringement case is most likely the best outcome for both parties. That being said, it is important to consider hiring a trademark attorney to respond to any cease and desist letter that you receive. If they do not receive a valid response to their trademark infringement notice, filing a lawsuit is often the next step taken by a party attempting to enforce their trademark.
What kinds of actions can I take in response to a trademark infringement notice?
The first action you should take in responding to a trademark infringement notice is to call and engage a trademark lawyer. An experienced lawyer can help you assess whether the claim being made is frivolous or legitimate. The worst thing you can do upon receiving such a notice is to take it upon yourself to call or e-mail the party that sent you the letter. Anything you say in the call or e-mail can be used against you in a subsequent infringement lawsuit. Most business owners are not well enough versed in trademark law to understand what even constitutes trademark infringement. While it can be a financial commitment to hire an attorney, the money you spend on the legal advice could save you a lot more than attempting to defend yourself, but making a mistake in communication with the other party while doing so.
Why might another trademark holder accuse me of infringing on them?
Other trademark holders want to protect their rights just as much as you want to protect yours. A trademark is a critical protection of a business or individual’s brand, identity, and reputation. The entity that sends you a cease and desist letter might feel that your mark is confusingly similar to theirs, and is drawing consumers away from their business to yours instead.
How can I avoid receiving a trademark cease and desist letter?
The best way to avoid receiving a trademark cease and desist letter is to take the proper steps at the beginning of the trademark process, once you begin or intend to begin using your mark. One of the best ways of lowering your chances of receiving a cease and desist letter comes right at the outset of the process: conducting a proper trademark search. As you’re selecting a mark, or once you have one in mind, it’s important to include a thorough research stage in your process to ensure that a mark similar or identical to yours isn’t already in use by another party. The act of filing a trademark application itself is also a wise step toward decreasing the chances that you’ll receive a cease and desist letter – your approved mark will be on record with the United States Patent & Trademark Office (USPTO) with your date of priority usage and an official record of your right to the mark. That registration can go a long way toward clearing up any confusion that other trademark owners may have about who holds the rights to a mark. That being said, it is important to note that a trademark registration does not make you immune from a claim of trademark infringement. The owner of another registered trademark, or, a common law trademark can still attempt to cancel your federal registration once it is received (typically for up to the first five years of registration). This is why engaging a trademark law firm to conduct a trademark search prior to ever using a name is so important. Laying a strong foundation for the use and registration of your trademark is the best way to avoid a claim of trademark infringement.