A cease and desist letter is correspondence sent from another party that alleges you are infringing a trademark or service mark (“mark”) and demands you stop using it to sell your products or services. You should take a cease and desist letter seriously. That being said, you do have several options for dealing with a cease and desist letter. You should consider the following options if you received a cease and desist letter.
Option 1 – Respond To The Cease And Desist Letter
An infringement analysis may reveal several reasons why there is no infringement despite what the cease and desist letter states. For example, there may be no infringement because no “likelihood of confusion” exists between the allegedly infringed mark and the mark that you use. Under United States trademark law, two marks that look the same may coexist in the marketplace. The marks DELTA for airline passenger services and DELTA for plumbing fixtures are two marks that look the same but coexist in the marketplace. Several factors are used to determine if there is a “likelihood of confusion”. These factors include: the similarity of the marks; the relatedness of the goods or services; the conditions under which the goods are sold and purchased, i.e., impulse vs. careful, sophisticated purchasing; the trade channels in which the goods travel; and, the number and nature of similar marks in use on similar goods or services.
Additionally, even if an allegedly infringed mark has been registered, you may have rights to use a mark. In certain cases, you may have the right to use a mark if your first use of a mark predates the first use by the other party. The above defenses and others may be appropriate in your case. An experienced trademark attorney should analyze your facts to determine what is your best response.
Option 2 – Request Additional Information
A letter responding to a cease and desist letter may request additional information to perform an infringement analysis. A cease and desist letter may not contain enough information to perform an adequate infringement analysis. In such a case, a response should request additional information.
Option 3 – Do Nothing
A business may elect not to respond to a cease and desist letter. In some cases, trademark cease and desist letters are sent to intimidate you into paying for use of the trademark even though you do not need to do so. In such cases, doing nothing may be an appropriate response. However, the decision not to respond should be taken cautiously and only after seeking advice from an experienced trademark attorney. If you are later found liable for infringement, a court may determine that you acted recklessly and subject you to additional monetary damages.
Option 4 – Negotiate
You may negotiate with the trademark owner for a license to use the mark on mutually agreeable terms. Before negotiating, it is wise to have an experienced trademark attorney review the cease and desist letter to determine points on which you may have leverage. By doing this, you ensure that any agreement you enter into will be the best case scenario for you.
Option 5 – File a Lawsuit
If you believe that your use of a mark is not infringing on an asserted mark, then you may want to preemptively strike and file a lawsuit seeking a “declaratory judgment” of non-infringement. In such a lawsuit, you would request that a court enter a judgment stating that your use of a trademark does not infringe the trademark rights of another. While litigation can be costly, the amount of money and other benefits earned from the use of the trademark may far outweigh the litigation costs. If you have spent significant amounts of time, money and resources to develop your trademark or service mark, you should carefully weigh the business risks and benefits before making a decision to file a lawsuit.
The attorneys at The Plus IP Firm focus on protecting their clients’ ideas, concepts, and creations with patents, trademarks and copyrights. The trademark attorneys at The Plus IP Firm have represented numerous clients in trademark disputes for clients in West Palm Beach and other cities in Palm Beach County, Fort Lauderdale and other cities of Broward County, Miami and the other cities of Dade County, Naples and other cities in Collier County, and other cities throughout Florida. To discuss your options click here to schedule a free telephone conference with one of our experienced trademark attorneys.
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