by Traverse Legal, reviewed by Enrico Schaefer - October 27, 2012 - h. Trademark Cease and Desist, Notice & Threat Letters
A sample trademark cease and desist or threat letter is
something that can be very valuable for you as a client in working with a
trademark infringement attorney who knows how to draft these documents because
it can give you the context of the types of things that your trademark attorney
is going to be doing for you in order to stop a third party from infringing
your trademark, either on the Internet or in the off line world. So a cease and
desist letter for a trademark infringement is one that is very typical, and
there certainly are some cease and desist letter forms out there. We are going
to post one to the bottom of this show so you could see what one looks like.
Welcome to
Trademark Law Radio, a top web resource on issues of trademark infringement,
trademark licensing, trademark protection, and trademark registration.
A sample trademark cease and desist or threat letter is
something that can be very valuable for you as a client in working with a
trademark infringement attorney who knows how to draft these documents because
it can give you the context of the types of things that your trademark attorney
is going to be doing for you in order to stop a third party from infringing
your trademark, either on the Internet or in the off line world. So a cease and
desist letter for a trademark infringement is one that is very typical, and
there certainly are some cease and desist letter forms out there. We are going
to post one to the bottom of this show so you could see what one looks like.
The key that you need to think about when you find someone
who's using your trademark without your permission, whether or not it's a
design of your logo or a slogan that you have used as a trademark or your brand
name, your company name, these types of things. When you send a cease and
desist letter, not all cease and desist letters are the same, and a good
trademark attorney will know what kind of trademark cease and desist or notice
letter that you need to send, and there are different flavors. For instance,
you might be going against someone who you believe has inadvertently used something
that's similar to your mark in that by their use and by who they are you come
to the conclusion that you don't think they're doing it on purpose.
Well, in many instances you may not be as threatening with
your trademark cease and desist letter as you would be if someone is clearly
trying to divert your traffic, and it's a competitor who is using your
trademark in keyword advertising or in the ad text of Google AdWords or in a
domain name that is similar to yours that's designed to try and get your
customers to do business with them. Those folks, they are probably
intentionally and willfully violating your trademark rights in order to steal
money from you and your business.
You need to understand who you're sending the letter to. You
also need to understand when you're taking a look at a cease and desist letter
form for trademark infringement, or copyright infringement, or what have you,
you want to take a look at a form or letter that is also going to account for
who you are. Are you a startup company with limited resources going against a
Fortune 500 business that is going to be able to bring a team of lawyers to the
table in order to defend. If so, you need to account for that. It doesn't do
you a whole lot of good to threaten to file a trademark infringement lawsuit
if, in fact, you can't afford a trademark infringement lawsuit.
So you need to take into account who they are, who you are,
how serious the infringement is before you go out and pick a sample trademark
cease and desist letter. These samples that you will find, including the one
below, are all good for you to take a look at so you understand what kind of
information you need to put together, such as what was your trademark first
use, when was the first use of the trademark by the third party who you say is
using your brand or name without your permission.
Is your trademark a registered trademark and how do you go
about registering a trademark with the USPTO? Before you pick the form, you
really should decide whether or not you can do this on your own and engage in
self-help. Understanding how to send a trademark cease and desist letter is as
important as anything else, and a good trademark attorney is going to
understand how to do that, when to do that, and what will happen next if, in fact,
you do that.
Look it, we've had situations where clients have come to us
after they sent a form of a cease and desist letter for a trademark
infringement or a copyright infringement to someone only to learn that the
other person actually has superior rights to them because they know that they
had to be first. I have the registered trademark, the other person does not;
therefore, I win. Well, that's not true. It's whoever uses the mark in commerce
will win.
So, if you're going to send a cease and desist letter out of
some form bank or one of the forms that's available online, you're taking the
risk that you may not have analyzed the trademark infringement issue properly,
whereas a good trademark infringement lawyer will know how to do that, and no
good trademark lawyer would send a letter if they weren't absolutely certain
that you had superior trademark rights. These are the types of things that you
have to take a look at.
Now, some companies, some startup businesses, just don't
have the funds to hire a good attorney to draft a cease and desist letter,
based on trademark infringement, and so they will go to a cease and desist form
letter approach in order to assert their rights. If that's your situation and
you just don't have the funds in order to get a good lawyer to help you out,
you really do have two choices.
You could either sit on your hands until you get the funds
or you could try and engage in cease and desist self-help and grab one of the
many cease and desist forms on the Internet that are available, try and fill in
those blanks, and go ahead and send it out. If it really is that important, and
typically it is when it comes to protecting your trademark and you can't afford
an attorney fee to do the analysis and send the letter, then you may have to
engage in self-help.
If you do so, you just need to make sure that you go in with
your eyes open. You are not a trademark law specialist. You don't necessarily
understand all the vagaries of trademark law. You could make a mistake in doing
your trademark analysis.
Here are some things that you definitely need to think
about. Number one, make sure that you were first to use the mark in commerce.
If there's a potential for trademark registration by the third party, you need
to check USPTO.gov, do a trademark search and see if, in fact, the person has
registered their trademark. Now, just because they registered doesn't mean that
they win. If you were first to use the mark in commerce, then you should win
that battle.
The next thing that you need to understand that any good
trademark lawyer will tell you before sending a trademark cease and desist
letter is that you need to make sure that the person that you're going up
against is, in fact, engaging in conduct that is likely to cause confusion as to
source and origin of goods and services. What that means is that just because
someone is using your identical mark doesn't mean they're infringing your
trademark. If you're selling widgets and they're selling flowers, then there
may be no likelihood of confusion and, therefore, no trademark infringement. So
you don't want to be threatening someone where there is no potential for
confusion out there, and they'll certainly send the letter back noting that.
There's Delta Airlines and there's Delta Faucets, and
they're in such different businesses that they can co-exist. If someone is
using a mark that is identical to yours within a similar market, then there's
probably a problem.
The third thing I want to tell you is that before you pick a
cease and desist letter form out of a form bank, you should make sure that you
have the ability to take the next step. There are demands that you are going to
make in the letter that you'll see in these trademark form letters that are
very important. Are you going to demand that they stop using it? Are you going
to demand that they limit their use? Are you going to demand that they no
longer use the trademark in certain ways? Are you going to ask them, based on
your allegations of trademark infringement, to contact you so you can discuss
it? What is it that you are demanding? You need to get those demands right
because, depending on what you ask for, you may or may not get a positive
response. It's very important to understand who they are before you make those
types of demands.
Now, if you're going to use your own self-help cease and
desist letter form, you should do significant research on the Internet to find
as many forms as possible so that you can cut and paste the items that you
think are most relevant. If the cease and desist item concerns a domain name,
then you may also have to make claims against the Anti-cybersquatting Consumer
Protection Act, ACPA, which protects trademarks in the domain space.
My name is trademark infringement attorney, Enrico Schaefer.
We'll see you next time.
You have been
listening to Trademark Law Radio.
Whether you are facing a trademark infringement, licensing, monitoring
or trademark registration issue, we have a trademark attorney ready to answer
your questions.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
