What should you do if you think that you want to send a cease and desist letter to an alleged infringer? This can be a stressful situation for a business owner. Before you send any demand letter, I encourage you to read this summary.
We work hard to build our reputation, branding, and content. It is not fair for someone else to copy these without our permission. There are several tools you can use, including sending a trademark cease and desist letter.
Remember it is important to stop copycats as soon as possible. If you wait too long, a court could say that you waived your rights.
This article is about sending a trademark cease and desist letter.
What is a trademark cease and desist letter?
A trademark cease and desist letter is a correspondence that you can send to someone if you believe that their brand name/logo/design is too similar to your own.
Sometimes this can result in the outcome you want, i.e. that the other person stops using your mark.
Sometimes it does not. In that case, you might have to file a lawsuit against the other person so that they stop using your mark. Do not sit on it. If you wait too long, a court could say that you waived your right to enforce your trademark.
What is the purpose of a cease and desist letter?
A trademark cease and desist letter (also known as a C&D Letter) is commonly sent in trademark infringement cases when one party believes that another party is using the same mark or a mark that is too similar to its own mark. In the United States, the Lanham Act (or Trademark Act) governs trademark legal rights and trademark disputes.
You can use a trademark cease and desist letter to ask someone to stop infringing on your brand instead of filing a lawsuit right away.
This method could save you thousands of dollars if the other party agrees once the party receives it. There is no guarantee but it is an efficient method to do prior to initiating a lawsuit.
Enforcing your Trademark
A trademark application and then a trademark registration is not the end of the road for securing your trademark rights. You also need to enforce your use of the trademark against other similar marks or there could be legal consequences. For instance, if you let someone use your trademark for an extended period of time, a court might find that was a waiver and prevent you from stopping them from future use. Thus, it is important to figure out the next steps and how to make an infringing party stop.
Is a trademark cease and desist letter necessary?
A trademark cease and desist letter may not be necessary but it is certainly recommended because it can save your business money.
It could be a $1,500-$2,500 investment to have an attorney prepare a cease and desist letter. However, it could easily be a minimum of $10,000-$20,000 to see a lawsuit through to the end.
I recommend following these steps when sending a TM C&D Letter.
Step 1- Investigate Trademark Infringement
The first step in any legal action is investigating the facts to make sure that you have a valid case for a claim of trademark infringement. Do not act on a whim because you think that someone is a potential infringer. The circumstances of the particular matter dictate what further action should be taken.
You might start with a trademark search to see how a potentially offending part is using your mark. What geographic areas are they operating in? What types of goods or services do they offer?
Likelihood of Confusion
These factors are important because infringement is based on a "likelihood of confusion" test. In other words, are the marks similar marks that could confuse consumers into thinking that the marks came from the same trademark owner?
The USPTO or federal court will also analyze whether the two marks share similar goods and services. If the goods and services are similar, and the marks are similar, a court could likely find that there could be consumer confusion and therefore infringement.
If someone has the same brand name as you, but the other person's business caters to a completely different consumer base, then there may not be infringement. For example, Delta Airlines and Delta faucets. The two industries are different. Delta Airlines is an airline service. Delta faucets is a household or plumbing product. A client for one will not automatically assume that the two companies are related to each other because the service and goods are so different.
Trademark vs Copyright Protection
The USPTO allows a trademark holder to retain exclusive rights over the goods or services depending on how the holder is using the mark. This is different than copyright protection because copyright law gives a copyright holder exclusive rights over all use of an artistic work. However, trademark rights only extend to the goods and services listed in the trademark application and for which the trademark owner is actually using in commerce. You cannot file a trademark application to squat on a mark without ever using it. The USPTO does not allow for such instances. You must assert that you are filing the application and will use the mark in good faith.
Common Law Trademark vs Registered Trademark
You should also check to see whether the potentially offending party has a trademark registration with the United States Patent and Trademark Office, or whether the offending party just has common law trademark rights. This can be the quickest way to see when a business started using a particular mark (like a business name or logo). Common law rights usually only extend to a particular geographic area but federal trademark registrations have nationwide protection.
Priority of Use Trademark
Priority of use is also an extremely important factor. You should not send any trademark infringement cease and desist letter to someone who was using the mark before you.
Date of first use can determine who is the rightful owner of a trademark name so be sure to look for this specific date.
USPTO Trademark Search
The USPTO TESS database is a great resource for checking for a registered trademark, and also other similar registered trademarks. If there are many similar registered trademarks, the court might find that a mark is diluted. Too many third-party similar registrations could weaken an argument for infringement.
Step 2- Strategize Trademark Enforcement
After you conducted your investigation, you should strategize on the best way to handle the situation and protect your registered mark. Here are a few options, but you might not need to do all of these:
You might want to reach out to the other person/company via phone call and kindly ask that it cease use of your trademark.
You might want to send them a message on social media.
You may want to send a stern demand letter asserting proof of your trademark rights.
Or you may want to send a kind trademark infringement letter. The tone of the letter matters. In this day and age, it is important to remember that anything can go viral. Do you want to be seen as a bully forcing a smaller company to stop using a mark? No. But you still have to police your trademark registration to ensure that your intellectual property rights are preserved. You cannot let too many people start using the mark because then the USPTO will say that you waived any argument to enforce it in the future.
Jack Daniels Cease and Desist Letter
One of my favorite examples of a trademark cease and desist letter involved the whiskey company, Jack Daniels. An author designed his book cover and it resembled the Jack Daniels label. The whiskey company sent a cease and desist letter to the author noting that it was flattered and understood the pop culture appeal of the brand.
The company also explained that it is required to enforce its mark to protect its trademark rights, or else it could face federal trademark dilution. It kindly asked the author to change the cover of his book and even offered to contribute reasonable expenses toward the new cover. The letter went viral because it was so kind.
The trademark lawyer who wrote it explained that you get more flies with Tennessee whiskey.
This is a great example of the impact a trademark letter can have. Had the tone been negative, Jack Daniels would have received viral press for the wrong reasons. This optional language is highly encouraged.
Is a cease and desist letter right for you?
Altogether, a standard document like a c&d letter may be the best course of action available to you. You need to make sure that your trademark is legally protected and enforced.
If you fail to enforce the mark, you could see your mark being diluted. Other companies could have similar domain names, websites, business names, logos, and designs.
Strategize and take swift action accordingly.
Benefits of Federal Trademark Registration
Federal registration is beneficial because it gives you access to the USPTO and federal court. If you pursue your trademark infringement claim, you can ask the court for a court order of injunctive relief or monetary damages. Injunctive relief is a non-monetary order asking someone to stop doing something. A monetary damages award could be a sum of money that the infringer has to pay you, and might even include legal fees to pay your attorney or trademark law firm.
Trademark Cease and Desist Letter Conclusion
In conclusion, make sure to police your trademarks and stop others from copying your marks. You can start with a trademark cease and desist letter, and proceed to a lawsuit if needed.
If you do not take any action, you could lose your trademark rights forever. Protect what you have or you could have to spend thousands on rebranding and customer acquisition.
An experienced trademark attorney is often helpful in this situation to strengthen trademark protection. You want to make sure that you understand these important explanations. The specific action you take can determine the future of your trademark rights.
If you have any questions, I'd be happy to help. I help businesses protect their intellectual property from trademark searches and trademark applications, to trademark enforcement. You can reach out to our office anytime at (754) 800-4481 or at www.mdgrlaw.com.
This article was about sending a trademark cease and desist letter.
Melissa D. Goolsarran Ramnauth, Esq. is a trademark and business attorney. She writes articles on trademark law. She also writes articles on West Indian history and politics to raise awareness of the past and educate the Caribbean diaspora on the need for legal contracts and trademarks. She graduated magna cum laude from the University of Miami with a Bachelor of Arts degree in Political Science, a minor degree in History that focused on the slavery and indentured servitude eras, a minor degree in Criminology, and a Juris Doctor degree.
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