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Responding to a Cease and Desist Demand Regarding a Trademark

Posted by Wayne Harper | Jul 26, 2017 | 0 Comments

No matter how long you have been using a trademark , there's always a chance you will receive a dreaded Cease and Desist (C&D) letter or email demanding you stop using the trademark.

 
The letter will typically be from a law firm and will generally say in a typically long winded, legalistic way:
  • We own all rights to the trademark XYZ (typically by long use and/or registration).
  • Your trademark ABC infringes our trademark.
  • Your use of the trademark ABC is damaging us.
  • Stop using the trademark ABC within some short period (e.g. 10 days).
  • Reimburse us for our legal fees and damages.
  • We'll sue you if you don't cooperate.

How should you respond? As all things legal go, it depends ...

Bear in mind, these kinds of letters are sent out all the time, the party sending the letter may have absolutely no intention of suing you, and their claim may be paper-thin. But you never know.

Here's one way of approaching C&D letters.

First, take a look at the entity claiming rights in a trademark you are supposedly infringing. Individuals and small companies oftentimes don't have the resources to sue you. A federal trademark infringement suit can easily cost the company filing the suit $30,000 or (possibly much) more.

Second, take a look at how important the trademark is to the sender of the C&D demand. If a company has been using their trademark a long time and it's their principle (or only) trademark, it's more important to them than if they just started using the trademark for one out of many products.

Third, try to figure out if you and the C&D sender are competing for the same customers. For example, if their business appears to be serving customers in locales distant from yours, your use of your trademark is not a great threat to their business.

Fourth, how similar is your trademark to that of the C&D sender. Sometimes, C&D senders try to assert or imply rights in a single common word within a longer trademark. That's generally overreaching.

Where the C&D sender is a small entity, the trademark isn't likely that important to them, you are not in direct competition to them, or your trademark does't look much like theirs, you can consider ignoring the C&D or sending them a letter telling them to go fly a kite (politely, of course).

When those factors don't apply, your risk is greater.

In the end analysis, perhaps the most important questions are, however. how important is the trademark to you, and how much would it cost you to rebrand?

If you don't care much about the trademark, the safest course is to simply stop using it. In such case you should send a response to the sender telling that you have or will cease using the trademark. If they asked for money, just say no ... its very unlikely they will pursue the matter further.

If you really want to keep using the trademark or it would be extremely expensive to rebrand, then you can consider refusing the demand and risking litigation. If you go that route, it might be best to consult an attorney.

 

About the Author

Wayne Harper

Harper IP Law, PA is the solo law practice of Wayne V. Harper. Before entering the practice of law, I worked for 18 years as an information technology professional with a wide array of corporations in retail and financial services industry, serving as a programmer, systems analyst, systems architect and director of software development, among other things. Since 2004 I've been advising businesses ranging from newly-formed companies to large publicly-held companies on a variety of intellectual property matters. I enjoy practicing intellectual property law and helping clients — both large and small — succeed. Here's how I typically serve clients. I offer patent services, trademark services, copyright services, software intellectual property services, and litigation services. Please take a look at any of my service offerings that may be of interest to you, or … Call Us Now!

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