Trademark Infringement Evaluation and Response (Send a Cease and Desist Letter)

General Information

Trademark rights may secure the exclusive use of a business/company name, product or service name, domain name (URL), business slogan or catchphrase, business logo, or any other unique feature relating to the sale of goods or services. Such rights are valuable, and a trademark owner should monitor or otherwise watch for unauthorized use of the mark. Knowledge of such use sometimes comes from another’s attempted trademark registration (such as through publication on the federal trademark Official Gazette, following trademark registration (discovered through a search of registered marks, or simply by observing an impermissible usage where no registration was attempted (discovered in the marketplace, identified through a Google search, etc.).

It is very common for individuals and small business entities to adopt their own trademarks without first performing an adequate trademark search. They may assume their idea is original when it is in fact already being used by another, perhaps by someone operating across the U.S. but who has secured nationwide rights through federal trademark registration. Whether the later user acted with knowledge or not, unauthorized use of the same or a similar mark in a way likely to confuse customers constitutes trademark infringement.

An individual or business with trademark rights must asset them or risk losing them entirely. Upon discovery of a legal claim, the law expects a claimant to immediately take action. Unnecessary delay in enforcing trademark ownership rights may show acquiescence or a lack of “good faith” in bringing a later trademark suit, resulting in a reduction of damages or allowing the infringer to continue use. In the meantime, the infringing user could take business from the rightful trademark owner, reap profits from the use of the mark, and establish a strong market presence and brand identity.

Purpose/Necessity

Trademark owners are usually business owners who know they hold certain rights but are unclear as to how best assert them. They may be uncertain as to the scope of their own legal rights or what claims may be asserted to bring an end to the infringing activity. The best response is to thoroughly investigate one’s own rights and the potential rights of the infringer. Upon consideration of the various legal options, the trademark owner should assert proof of his or her trademark rights and formally request that the infringing activity terminate. This usually involves obtaining a legal opinion on the matter and sending a cease and desist letter to the infringer.

A cease and desist letter provides the infringer with notice of another right’s to a particular trademark and often resolves the matter quickly and completely. Of course, the infringer may not respond or deny infringement, in which case further legal action will be necessary. The prior transmission of a cease and desist letter will provide benefits should this occur. It will provide proof that the infringer is on notice as to another party’s rights. Should the infringement continue, it is highly likely a court will view this as “willful”, thereby subjecting the offender to increased penalties which may include actual damages, attorney’s fees, and court costs. 15 USC 1117(a). Upon proof that a cease and desist letter was sent prior to the initiation of a lawsuit, a Judge will be more inclined to award such damages. See, e.g., Discovery Communications, Inc. v. Animal Planet, Inc., 172 F. Supp. 2d 1282 (C.D. Cal. 2001).

Frequently Asked Questions

  • What will happen after the Cease and Desist Letter is sent?
    • The infringer could respond in one of the following ways:1. Agree to stop use – it is important to monitor that the infringer does in fact comply with the request. It is a good idea to memorialize the trademark owner’s rights and the infringer’s agreement to cease infringement through a Settlement Agreement.2. Ask to continue use under some sort of license – the trademark holder agrees to let the infringer utilize the trademark in a specified way for a fee. The trademark holder should continue to monitor to ensure infringing activities are not expanded.3. Not respond at all – the infringer should be monitored to determine if use ceases or continues. If nothing changes, a second letter could then be sent or a more serious action could be taken.

      4. Respond with a denial of infringement – the infringer should be monitored here as well as undertaking future correspondence/negotiation. If no agreement can be reached, the trademark holder could file a Notice of Opposition or Petition for Cancellation with the federal trademark office, file a lawsuit in district or state court, or initiate a domain name dispute before ICANN.

  • Can I just contact the infringer myself and request that he/she stop?
    • You always have this right and this is better than doing nothing. However, if you are unfamiliar with trademark law, you may make a well-meaning statement that unintentionally damages your legal rights. Further, when such a request comes from an attorney knowledgeable about trademark law and experienced in dealing with infringement, it is more likely that the request will be taken seriously. By specifically detailing the trademark holder’s rights and the potential consequences for continued use, the infringer is more likely to honor the request to discontinue use.If you use our firm to challenge infringement, we will send the infringer a professional request that touches upon all the relevant legal issues. Though our communication is targeted to obtain quick compliance, whatever the infringer’s response, we are prepared to take the next step.
  • May I prevent another’s infringing use if I have not yet registered my trademark?
    • Yes, though the process will be more complicated. Lack of trademark registration will make proving your rights and earlier first use more difficult. Consequently, the infringer may be less inclined to comply with a request to stop.At the same time you seek to prevent the infringer’s activities, you should file for trademark registration. Your application for registration will be required to file an opposition or cancellation proceeding with the federal trademark office. A federal trademark registration will provide the right to file a lawsuit in federal court (see 15 USC 1121), and a Kentucky trademark registration is required to file a lawsuit in Kentucky (see KRS 365.601). Your rights upon registration will largely depend on whether the infringer has secured trademark registration and the strength of that registration. For these reasons, the application for registration should be filed as soon as possible.
  • What should I do if I am the one who received a Cease and Desist letter?
    • You should evaluate the sender’s legal claims and prepare a response. If you do not respond, or if you deny infringement, the trademark holder could file a Notice of Opposition or Petition for Cancellation with the federal trademark office, file a lawsuit in district or state court, or initiate a domain name dispute before ICANN. All such options may limit or terminate your trademark rights.When trademark owners contact our firm about potential infringement, we perform a diligent investigation and draft an in-depth cease and desist letter. However, other trademark owners may send such a letter themselves or adapt a bare bones letter from a legal document service that does not demonstrate proof of infringement. Accordingly, receipt of a cease and desist letter is no guarantee that infringement has occurred.If you use our firm to respond to a notice of infringement, we will investigate the matter thoroughly, offer legal opinion as to whether you infringed at all, and in either case provide a recommendation as to how best to respond.
  • What steps should be taken after a Cease and Desist letter is sent/received?
    • This depends on whether and how the recipient responded and the scope of each party’s legal rights. If infringement is obvious and agreed upon, a Settlement Agreement may be arranged whereby the trademark holder agrees not to take any further legal action so long as the infringer agreed to remove infringing content and not infringe in the future. If some infringement will be allowed to continue, the parties may enter into a Consent Agreement/Coexistence Agreement, or a Licensing Agreement/Distribution Agreement. If the parties cannot agree at all, a federal TTAB opposition or cancellation proceeding, a federal or state lawsuit, or a domain name dispute may have to be filed.

Legal Services Offered and Cost

Trademark Infringement Legal Opinion and Cease and Desist Letter
Legal fees: $500 flat fee
Filing fees and other costs: none
This includes:

  1. Investigate details about client’s existing trademark(s) and scope of rights
  2. Perform due diligence (an investigation) concerning the presumed infringement to confirm infringing activity/use
  3. Email client results of investigation and offer legal opinion about the extent of infringement, the likelihood of success in an infringement action, and how best to respond
  4. If infringement is found, send infringer a cease and desist letter demanding that all infringing activities stop
  5. Email client details about any response from infringer
  6. Provide client with recommendation as to further action

If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.

 

Trademark Infringement Settlement Agreement
Please note: this service is appropriate for a trademark owner who has already contacted an infringer and has received a response where infringement is acknowledged

Legal fees: $300 flat fee
Filing fees and other costs: none

This includes:

  1. Review client’s information and correspondence between client and infringer
  2. Answer client questions and obtain additional information as needed
  3. Negotiation with infringer to remove infringing content and agree to no future infringement
  4. Drafting of settlement agreement to define the parties’ future legal rights
  5. Submission of agreement to each party for final execution

If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.

 

Trademark Infringement Legal Opinion and Cease and Desist Letter Response
Legal fees: hourly rate
Filing fees and other costs: none

This includes:

  1. Investigate details about each party’s existing trademark(s) and scope of rights
  2. Perform due diligence (an investigation) concerning the presumed infringement to determine whether infringing activity/use has occurred
  3. Evaluate all legal deadlines if an opposition, cancellation, lawsuit, or domain dispute has already been filed
  4. Email client results of investigation and offer legal opinion about the extent of infringement, the likelihood of success in defending against infringement action, and how best to respond
  5. Respond to a cease and desist letter issued if sent from the presumed trademark owner
  6. Email client details about any response from presumed trademark owner
  7. Provide client with recommendation as to further action

If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.