Advice for Do It Yourselfers (DIY)

Cease and desist letters can lead to shut down web sites, trademark oppositions, lawsuits and other harms to your business. Getting help answering a cease and desist letter may be a good idea but if you want to learn more, this report from Congress has a lot of good information. Trademark Litigation Tactics  and  Federal Government Services to Protect Trademarks and Prevent Counterfeiting (pdf) (April 2011).

Not Just Patents answers and sends cease and desist letters. In both situations, we find applying the law to the facts is much more effective than a form letter.


Cease and Desist Letters For Trademarks and Trade Names (Business Names)

Trademark or business name enforcement efforts usually begin with sending a demand letter, also known as a “cease-and-desist letter.”  The cease-and-desist letter serves to put the alleged violator on notice of the mark owner’s rights and the violator’s perceived rights violation.  

The goal of this letter may be to give notice of a coming litigation, to try to avoid litigation, to try to get compliance or other goals.


Trademark and Trade Name rights are not the same

Trade names symbolize reputation of business as whole, whereas trademarks and service marks are designed to identify and distinguish company's goods and services; as with right to trade name, right to control use of trademark depends on priority of use. Stephen W. Boney Inc. v. Boney Services Inc., 44 USPQ2d 1225 (9th Cir. 1997).

Just having a state business entity registration may not be enough to protect a business name out side of the local area if you intend to also use it as a trademark.


Typical Parts of a Cease and Desist Letter The typical format of a cease-and-desist letter notifies the alleged infringer of the mark owner’s rights, explains why the mark owner believes confusion (or if appropriate, dilution) is occurring, or likely to occur if the alleged infringer continues use of its mark, and sets forth the mark owner’s demands that the alleged infringer take certain actions (e.g., ceasing use, abandoning applications, surrendering domain names, obliterating the mark from existing products, limiting use to a certain manner and scope, paying profits, and the like).  The letter also usually requests a response by a specified date or within a specific time frame.  


Demands

The demands in the letter and the tone (threatening or conciliatory) may vary depending on the facts and circumstances presented.  If a violation is sufficiently problematic that the mark owner is prepared to litigate immediately, the letter may threaten such litigation if the violator fails to comply with the demands set forth in the letter.  The letter may even be accompanied by a courtesy copy of a complaint that has been or will be filed if the matter cannot be expeditiously resolved to the satisfaction of the mark owner.




More on Cease and Desist Letters

How to Respond to a Cease and Desist Letter

Upon receiving a demand letter, the recipient may respond on its own or consult with trademark counsel.  Often, counsel will send a “hold” letter to buy time to investigate the merits of the mark owner’s claims, consult with the client, and prepare a response.   Responses to a cease-and-desist letter generally fall into three main categories:   

1)   The alleged violator agrees to comply with the mark owner’s demands and/or stops using the offending trademark.  If this occurs, the parties may memorialize this in writing with either a written response letter that resolves the matter, or if the matter is more complex, via a settlement agreement.  

2)   The alleged violator does not respond within the specified time frame.  At this point, the mark owner often will send a follow-up letter.  If no response is forthcoming, the mark owner will either decide to drop its effort and acquiesce in that party’s use, or the mark owner will continue to pursue the matter by filing a lawsuit (typically in a Federal district court).  If the owner’s concern relates solely to efforts to register a mark, the owner may opt to file a proceeding with USPTO’s TTAB to petition to cancel a registration or oppose an application, instead of filing a district court action.

3)  The alleged infringer denies the allegations of infringement and/or asserts various legal defenses justifying its ability to use its mark, files a declaratory judgment action, or offers a compromise solution for going forward.  If the response presents compelling facts or legal points that the mark owner may not have known or failed to consider, the owner may decide to pursue settlement or drop its claims altogether (e.g., if it turns out the alleged infringer can show that it has priority of use).  If the mark owner does not believe settlement is possible, the mark owner usually will continue to pursue the matter by filing a lawsuit or initiating a cancellation or opposition proceeding with USPTO’s TTAB.

 

Much of the information in this column is extracted from: A Report to Congress titled Trademark Litigation Tactics  and  Federal Government Services to Protect Trademarks and Prevent Counterfeiting (pdf) (April 2011).

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