I received a cease and deist letter for trademark infringement, what should I do?

I received a cease and deist letter for trademark infringement, what should I do?

A trademark can be just about anything that a company uses to distinguish their products in the marketplace from competitors products.  Words, short phrases and symbols are the most common types of trademarks but it is possible to trademark other things which consumers associate with the producer of a product.  When a company starts using a trademark to brand their products the company is granted the exclusive right to the trademark on similar products.  The company can choose to register the trademark, which will strengthen the rights associated with the trademark, but federal trademark registration is not required in the United States.  If someone other than the trademark owner uses the trademark in a way that causes consumer confusion, that is considered trademark infringement.  A trademark owner can file a lawsuit to stop future trademark infringement with an injunction and to get monetary damages for past trademark infringement.

It is rare that a trademark owner will file a trademark infringement lawsuit with out first contacting the alleged trademark infringer.  Lawsuits are costly, time consuming and not guaranteed to succeed.  When a trademark owner believes that their rights are being infringed they will typically have their attorney send a cease and desist letter to the alleged infringer asking the infringer to stop.  A cease and desist letter might be sent as a written letter, email or fax, but for the purpose of this blog post we will assume it is a letter.

If you receive a cease and desist letter it is best to consult with an attorney experienced in trademark dispute before you do anything.  There are several ways to respond to a cease and desist letter, and each option has different legal implications which your attorney can explain in more detail.   The primary options you have when you get a cease and deist letter are:

1. You can respond to the letter:

(a) If you have a basis for doing so, you may respond to the letter and deny infringement; or

(b) You may respond by requesting more specific evidence as to why the trademark owner believes you are infringing its mark, including exploring dates of first use, whether the mark is federally registered, and the geographic areas where the trademark has been used.

(c) If you feel strongly that your use of the trademark is fair use you could explain your rationale.

2. You can attempt to negotiate:

You may negotiate with the trademark owner for a license to use the mark on mutually agreeable terms, or to obtain an agreement that your use of the trademark does not infringe on the rights of the trademark owner.

3. You can choose to do nothing:

You may decide to not respond to the letter. Some trademark cease and desist letters are sent in the hope that some recipients will be misled or intimidated into stopping or paying for a license to use the trademark even though they do not need to do so. However, the decision not to respond should not be made lightly because not responding to a cease and desist letter carries some risk. If you are later found liable for infringement, the court may determine that you acted recklessly and subject you to additional monetary damages.

4. You can file your own lawsuit:

If you strongly feel that you are not infringing on the trademark, and your attorney agrees, you may want sue the trademark owner for a “declaratory judgment” stating that your mark does not infringe the trademark.

An attorney experienced in trademark disputes can help you decide among these and other options and how to implement them.

If you have questions or comments for the authors of this blog please email us: admin@uspatentlaw.cn