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-How to Begin

Trademark enforcement efforts usually begin with sending a demand letter, also known as a “cease-and-desist letter.”  The cease-and-desist letter serves to put the alleged violator on notice of the mark owner’s rights and the violator’s perceived rights violation.  The normal goal of such a letter is to obtain early resolution of the matter and spare both parties the time and expense of a civil litigation or inter partes proceeding before USPTO’s Trademark Trial and Appeal Board.  


Typical Format of a Cease and Desist Letter

The typical format of a cease-and-desist letter notifies the alleged infringer of the mark owner’s rights, explains why the mark owner believes confusion (or if appropriate, dilution) is occurring, or likely to occur if the alleged infringer continues use of its mark, and sets forth the mark owner’s demands that the alleged infringer take certain actions (e.g., ceasing use, abandoning applications, surrendering domain names, obliterating the mark from existing products, limiting use to a certain manner and scope, paying profits, and the like).  The letter also usually requests a response by a specified date or within a specific time frame.

Demands

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-and-desist letter generally fall into three main categories:   

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-up letter.  If no response is forthcoming, the mark owner will either decide to drop its effort and acquiesce in that party’s use, or the mark owner will continue to pursue the matter by filing a lawsuit (typically in a Federal district court).  If the owner’s concern relates solely to efforts to register a mark, the owner may opt to file a proceeding with USPTO’s TTAB [Trademark Trial and Appeal Board] to petition to cancel a registration or oppose an application, instead of filing a district court action.

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 1-651-500-7590    or email us at WP@NJP.legal.


Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

WP@NJP.legal


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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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