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).

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