What you should do if you receive a cease and desist letter.

October 15, 2015 — Leave a comment

If someone thinks you are infringing their trademark, they may send you a cease and desist letter prior to suing you for trademark infringement. Receiving one of these letters can leave you confused and/or mad. However, it is important that you take the letter seriously and carefully consider what to do next because you don’t want to end up in a trademark infringement lawsuit.

Below are four options you have when you receive such a letter.

Option One: Do nothing.

Your first option is the simplest option: do nothing. You can ignore the letter and take the risk of what happens next. Sometimes the other party will just forget about you. More often, they will send you a second or third letter. And if you still don’t respond they may seek more forceful actions against you including filing a lawsuit for trademark infringement against you in federal court.

And even if your actions don’t constitute trademark infringement, the other party can still sue you. Assuming you are not committing infringement, you might be able to win the lawsuit. But being a party to the suit won’t be fun and it can cost you a small fortune.

For that reason, you should always do something when you receive such a letter.

Most often, your best course of action will be to speak to a trademark attorney about whether your actions do or do not constitute trademark infringement. Your trademark attorney can then advise you on possibly taking one of the three routes described below.

Option Two: Negotiate.

If you agree you are committing trademark infringement, then you can try to negotiate your way out. Often times the other party will be friendly with you if you were an innocent infringer. You can ask for time to phase out your use and adopt a new name and you can sign an agreement with the other party to avoid financial damages and subsequent lawsuits.

And in some situations you can negotiate some kind of trademark license agreement or an agreement not to enter the other party’s geographical region.

If you don’t think you are committing trademark infringement, then you can negotiate a settlement or, more likely, respond as outlined below.

Option Three: Respond.

Your attorney can help you draft a proper response. If you are alleging you are not committing trademark infringement, then you need to ensure your response clearly explains why you believe you are not infringing. Citing cases or case law about how your mark is not confusingly similar to the other mark, or showing examples of why the other mark is weak, are ways you can go about arguing your case to the other party. Alternatively, if you have been using your mark longer than the other party, you may allege that as a basis of non-infringement.

And if you are really confident you are right and are concerned the other party will drag the dispute on forever, you can file a lawsuit.

Option Four: File a Lawsuit.

This is an extreme option but it can certainly be beneficial to certain trademark owners. You and your trademark attorney can file a lawsuit to seek a “declaratory judgment” of non-infringement. In short, you are asking a court to compare your mark to the other mark and rule that your use of your mark does not constitute trademark infringement.

What You Should Do

Regardless which route you want to take, you should always seek competent advice from a trademark attorney. He or she can advise you on your rights, your likelihood of success, and more. Without their experience, you may find yourself in more trouble than you need to be in.

If this post is helpful to you, you should check us out on Twitter and Facebook to stay up-to-date on trademark law.

Image: Adobe/Andrey Popov
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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