Trade Name (Business Name) or Trademark Cease and Desist Letters
Trade name, business name or trademark enforcement can be started by using cease and desist letters and the respective actions with third party providers like domain name registrars, host providers, web site builders, Facebook, Twitter, etc. Parties like these often require users to agree to their contract and terms which include that the user will not infringe on someone else’s rights.
Be aware that enforcing trade names or trademarks that are not federally registered is not easily done. An unregistered trade name or trademark only accrues rights in the geographic area where the trade exists and then those rights depend on a number of other factors including how distinctive the name is, how it has been used, is there a likelihood of confusion and other issues. Ultimately a court may have to be the judge on whether or not confusion exists and who has priority of use for the name and in what context.
A short investigation (like the investigations that Not Just Patents® Legal Services does before they send out cease and desist letters) might show that the business that you were about to send a cease and desist letter to actually started using the trademark or trade name before you or has acquired valid rights in some other way. Sending them a cease and desist letter could be like striking a hornet’s nest and standing still with the stick in your hand. At Not Just Patents we search applicable business records before sending cease and desist letters. We also use cease and desist letters that use facts and how they apply to the pertinent law. Form letters aim low, Not Just Patents aims higher to protect your rights. A bad form letter or a letter that was not received by the right party may not just defeat the process of giving notice to a potential infringer but may also show the potential infringer that you do not understand the applicable law.
Not Just Patents can provide you with a cease and desist letter to help you to enforce your trademark, trade name, trade dress, domain name rights, or patent rights. We can help you to oppose or cancel registering or registered trademarks that infringe on your prior rights or harm your business based on some other grounds for opposition or cancellation. We also help businesses answer cease and desist letters to help to avoid litigation where a use may be noninfringing or in good faith. Many attorneys make their living from litigation and may look for ways to turn situations that may be noninfringing or in good faith and turn them into lots of billable hours. We have seen cease and desist letters from large law firms representing large companies that do not do any research on facts before they send out cease and desist letters trying to scare businesses into giving up their legal rights. We may be able to help you if you are in this situation.
We also see cease and desist letters from businesses that are completely founded in fact because many new businesses do not even try to avoid conflicts. Many businesses launch using trade names, trademarks, brand names, etc. that have not been properly verified for noninfringing use. We may be able to help you too if you are in this situation but we would advise new businesses to seek help staying clear of infringing from the beginning. Starting over with a new business name, trademark, or domain name can result in significant loss of business especially if that DO OVER must happen quickly in order to avoid intentional infringement. We would advise businesses to plan for success. A Strong Trademark, Strong Domain Name, Strong Trade Name or Broad Patent is a more valuable piece of intellectual property.
How Should A Cease and Desist Letter Be Sent?
As a general rule, Not Just Patents® uses email as a supplement but not as a primary way to send a cease and desist letter. There are several reasons that deal with verification and professionalism. Certified Mail with a signature required is a favored way that we use to send cease and desist letters because you get back a verifiable signature saying that the letter was accepted or was not accepted.
Finding out that someone is no longer at an address can be valuable information so even a refused certified mail serves a purpose. If it takes multiple letters just to reach someone (which is often true with new or small businesses) but they claim in a legal document somewhere that the addresses are valid, you have reason to believe otherwise.
But professionalism is a another issue. People shoot off angry emails all the time that they later regret, for instance the case when a little research shows that you sent a cease and desist letter to someone who was using a mark before you that may have superior rights and they respond by suing you or calling you as a witness in a lawsuit or just a situation where an quick angry email may not reflect what you would have said had you taken more time to think things over.
Trademark Rights and Enforcement
A Report to Congress titled Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting (April 2011) has recently looked at the issue of cease and desist letters (amongst other things) and evaluates whether trademark rights have been enforced beyond a reasonable scope. The Report discusses cease and desist letters and what they typically contain and how they are typically responded to. The following sections are extracted from this report:
Trademark Enforcement Steps-
Trademark enforcement efforts usually begin with sending a demand letter, also known as a “cease-
Typical Format of a Cease and Desist Letter
The typical format of a cease-
The demands in the letter and the tone (threatening or conciliatory) may vary depending on the facts and circumstances presented. If a violation is sufficiently problematic that the mark owner is prepared to litigate immediately, the letter may threaten such litigation if the violator fails to comply with the demands set forth in the letter. The letter may even be accompanied by a courtesy copy of a complaint that has been or will be filed if the matter cannot be expeditiously resolved to the satisfaction of the mark owner.
How to Respond to a Cease and Desist Letter
Upon receiving a demand letter, the recipient may respond on its own or consult with trademark counsel. Often, counsel will send a “hold” letter to buy time to investigate the merits of the mark owner’s claims, consult with the client, and prepare a response. Responses to a cease-
1) The alleged violator agrees to comply with the mark owner’s demands and/or stops using the offending trademark. If this occurs, the parties may memorialize this in writing with either a written response letter that resolves the matter, or if the matter is more complex, via a settlement agreement.
2) The alleged violator does not respond within the specified time frame. At this point, the mark owner often will send a follow-
3) The alleged infringer denies the allegations of infringement and/or asserts various legal defenses justifying its ability to use its mark, files a declaratory judgment action, or offers a compromise solution for going forward. If the response presents compelling facts or legal points that the mark owner may not have known or failed to consider, the owner may decide to pursue settlement or drop its claims altogether (e.g., if it turns out the alleged infringer can show that it has priority of use). If the mark owner does not believe settlement is possible, the mark owner usually will continue to pursue the matter by filing a lawsuit or initiating a cancellation or opposition proceeding with USPTO’s TTAB.
Please call Not Just Patents for cease and desist letters or responses to cease and desist letters at 1-
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