This blog is the fifth in a series that Finkel Law Group is publishing to provide our readers with a broad overview of trademark law in the United States. In the United States, to maintain your legal rights in your trademarks you must be diligent in protecting your marks by taking appropriate enforcement action against infringement and other misuse by third parties. One of the first steps in enforcement is often a cease and desist letter. This approach can be an efficient and cost-effective way to stop infringement without the need for litigation. However, sending a cease and desist letter requires careful consideration of the legal and strategic implications. Before you decide to take action to enforce your company’s trademarks you should consult an experienced trademark litigation attorney to discuss the most appropriate steps forward to protect your marks.
First Steps
Trademark owners faced with infringement or misuse of their marks by third parties typically ask their attorney to send a cease and desist letter to the offending parties to attempt to resolve the matter without the need for formal legal action. A cease and desist letter can be an effective tool to stop the infringing use, preserve the trademark owner’s rights, avoid costly litigation, and set the stage for commencing litigation if it becomes unavoidable. To maximize its effectiveness, a cease and desist letter should be supported with verifiable facts, contain clearly articulated legal claims, set forth specific demands for relief, and contain the appropriate tone for the particular situation. There is no need to threaten or antagonize a potential infringer with your first letter when you may not have all the facts. Most cases settle and it’s always easier to resolve a dispute before emotions run high and opposing parties dig in their heels and lock in their positions.
Potential Benefits
Before preparing – and certainly before sending – a cease and desist letter, you should speak with your attorney to assess the potential benefits and risks of sending such a letter. The potential benefits of sending a cease and desist letter for you as a trademark owner are several. You may be able to resolve the dispute with the alleged infringer without litigation. You may learn the basis for the alleged infringer’s defenses if it sends a substantive response to your letter. You may gather information that allows you to provide evidence for a finding of willful infringement and enhanced damages if the alleged infringer ignores your letter. You will create a written record of your trademark enforcement actions that may benefit you as the trademark owner in future litigation involving your trademark.
Potential Risks
It’s important to keep in mind that sending a cease and desist letter also poses certain risks to you. The alleged infringer may file a declaratory relief action in federal court in response to your letter, seeking a declaration of non-infringement or invalidity of your trademark. The alleged infringer may raise in litigation viable acquiescence, waiver, or laches defenses to your claims if you fail to follow-up on your letter in a timely manner and allow the infringement to continue unabated. You as the trademark owner could be labeled a “trademark bully” or suffer other negative publicity if the letter overreaches or is otherwise inappropriate with respect to the alleged offenses.
Talk to a Good Trademark Attorney
Before you decide to send a cease and desist letter to a potential infringer consult with a skilled and experienced trademark attorney to discuss all the evidence you have to support your claims, and the pros and cons of sending such a letter to an alleged infringer. Don’t do it on your own.
Finkel Law Group P.C., with offices in San Francisco and Oakland, has more than 25 years of experience helping our clients navigate the requirements for registering their trademarks through the U.S. Trademark Office, licensing those trademarks for commercial gain, and enforcing trademark rights in administrative proceedings before the TTAB and in judicial proceedings in federal court. When you need intelligent, insightful, conscientious and cost-effective legal counsel to assist you in understanding new laws that may affect your company’s intellectual property rights, please contact us at (415) 252-9600, (510) 344-6601, or info@finkellawgroup.com to speak with one of our attorneys about your matter.