Trademark owners acquire complete rights to protect and enforce their intellectual property rights after registering the work with the United States Patent and Trademark Office (USPTO). So if a trademark owner comes across an infringement of their mark, they have the full right to take action against it. One of the ways this is done is by sending a trademark cease and desist letter.
If, as a business owner, you receive or have received such a notice, then it is alarming because if the claims in the notice are valid, your business would severely suffer. In such situations, it is important to have an idea of what action to take in this regard. Read this blog to learn about the action plan to implement in case you receive a cease and desist or infringement notice.
What is a Cease and Desist Letter?
A trademark cease and desist letter is a formal notice, typically delivered either by mail or email, regarding the unauthorized use of another person or business’s trademark. This letter mentions the trademark being misused and requires the recipient to immediately ‘cease’ any further use of it.
As stated above, a trademark owner has complete rights to enforce and protect their trademark therefore, they take every possible step to protect it – and one of the ways to do so is by sending a notice.
Components of a Trademark Cease and Desist Letter
Although there is no strict format for a cease and desist letter, there are certain components which are almost always there:
- The name and basic details of the trademark owner
- The trademark in question along with its registration number
- Information about the unauthorized use of the trademark
- Evidence demonstrating the similarity between the trademark and the infringing mark
- A demand from the sender to cease the use of the infringed trademark, usually within a specified timeframe
- Notice of potential legal action if the infringer fails to comply with the request
Why did I receive a Cease and Desist letter?
Although there can be multiple reasons for receiving such a notice, the most possible answer is that the sender believes that you are liable for trademark infringement. While you might have a different opinion on this issue, it’s important to recognize that trademark law and related disputes are based on solid facts rather than subjective opinions. Keeping this in mind is necessary when drafting a response to the notice.
However, it’s also possible that some trademark owners might use the cease and desist letters as a way of intimidating or manipulating you and they wish to seek an unfair competitive edge by doing so. Even if you believe that this is the case, it is still crucial to provide a well-reasoned and fact-based reply.
Am I Being Sued If I Have Received a Trademark Infringement Notice?
A cease and desist letter does not mean that you have been sued. Trademark holders often begin the process by sending such a letter when they believe their mark is being infringed, and their aim is to negotiate an out-of-court settlement. This approach is generally seen as the most favourable solution for both parties involved in the dispute as it is relatively inexpensive and less time-consuming.
However, it is crucial to consult a trademark attorney if you receive such a letter, as a proper legal response is essential because failing to address the notice appropriately may escalate the matter to formal litigation.
How to Respond to a Trademark Cease and Desist Letter?
There are different ways to respond to a cease and desist letter. Generally, you have four routes:
Ignoring the Letter
You have the option to ignore the cease and desist letter, as well as any subsequent notice or communication with the sender. However, you must know the possible risks associated with this decision. If it is later determined that you have violated the sender’s trademark rights, the courts may view your behaviour as reckless or irresponsible. As a result, you might be liable to pay higher damages.
Responding
On the contrary, you can choose to respond to the notice. Many individuals, in fact, do respond to the cease and desist letters, mostly by asking for evidence or denying the infringement. Regardless of the approach, it is important to respond thoughtfully and conduct thorough research into the matter such as the date the mark was first used, its federal registration status, and the geographic area where it is in use.
Negotiating a Deal with the Trademark Owner
The third possible way to respond when you receive a cease and desist letter or infringement notice is by negotiating a deal with the trademark owner. This can be done through a written agreement declaring that the recipient was not involved in any infringement activity. The parties can also come to an understanding regarding the mutual use of the trademark.
Filing a Lawsuit
The fourth, but a lesser-adopted route, is filing a lawsuit against the sender. This option is pursued by individuals who believe their use of a trademark does not interfere with the rights of the trademark owner, or those who believe that they have a legitimate interest in continuing to use the mark. By filing the lawsuit, one can seek a “declaratory judgment,” which, if granted, would officially confirm that their use of the mark does not infringe upon the owner’s trademark rights.
Ultimately, every route has its benefits and drawbacks, and the most suitable strategy amongst these four would depend on the case. Since trademarks are tied to business interests and can have financial implications, filing a lawsuit might be the best option, but in some situations, it might not be. Ultimately, the best legal advice in this regard can be taken by an experienced trademark attorney.
Seeking Help from Our Trademark Attorney
As mentioned before, there are instances when the notices are sent to intimidate the rival party or to demand compensation on unfounded grounds. A common person having little to no experience in such matters would find it difficult to differentiate between a valid and invalid notice. Therefore, seeking professional help is the best way to handle a trademark cease and desist letter.
At Drishti Law, you can book a free consultation today with our experienced principal attorney who can assist you in protecting your trademark registration and defending your rights in any legal capacity.
Sahil Malhotra
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
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