Receiving a cease-and-desist letter accusing you or your business of trademark infringement can be unsettling. The letter may demand that you stop using a business name, logo, product name, or other mark, sometimes within a matter of days. It may also threaten a lawsuit if you do not comply.
Do not panic, but do not ignore the letter either. Receiving a demand does not automatically mean you infringed someone’s trademark. Before responding or making changes to your business, take time to determine what the sender is claiming and what options you have.
Read the Letter and Pay Attention to the Deadline
Start by reviewing exactly what the trademark owner is asking you to do. A cease-and-desist letter may demand that you stop using a mark, remove products or advertising, transfer a domain name, abandon a trademark application, or provide information about past sales. It will often include a deadline for responding.
A cease-and-desist letter is not a court order, but ignoring it can still carry risk. The sender may decide to file a lawsuit or take other legal action if the dispute is not addressed.
As you evaluate the letter, preserve the letter, envelope, attachments, and any related emails. Also, keep records showing when and how you began using the disputed name or mark.
Do Not Assume the Trademark Claim Is Valid
A trademark registration can give its owner significant legal rights, but a demand letter alone does not establish infringement. Trademark disputes depend heavily on the particular facts.
One of the central questions is whether consumers are likely to be confused about the source, sponsorship, or affiliation of the parties’ goods or services. Courts may consider the similarity of the marks, the relationship between the goods or services, how the parties market their products, the strength of the claimed trademark, and evidence of actual confusion, among other factors.
It is also important to determine who first used the mark. Trademark rights can arise from use, even without federal registration, so simply searching the federal trademark database may not provide the complete answer.
Avoid Sending a Hasty Response
It may be tempting to immediately email the sender, explain your side, or agree to stop using the mark just to make the problem go away. However, that response could affect your position later.
Before communicating with the trademark owner or its attorney, consider having a trademark lawyer review the letter. These attorneys can evaluate the claimed trademark rights, the history of each party’s use, the likelihood of confusion, and any defenses or weaknesses in the allegations.
The response does not always have to be a simple yes or no. Depending on the circumstances, you may deny infringement, negotiate changes to how a mark is used, seek additional time to transition to a different name, or explore another resolution that avoids litigation.
Consider What Is at Stake for Your Business
Changing a trademark can involve much more than choosing a new name because a business may have already invested in its website, signage, packaging, social media accounts, advertising, and customer recognition. At the same time, continuing to use a disputed mark without evaluating the legal risk could lead to a more expensive conflict.
That makes it important to consider both the strength of the legal claim and the practical cost of each possible response.
Talk with a Trademark Attorney Today
If you received a trademark cease-and-desist letter, addressing it early can give you more time to evaluate the allegations and decide how to respond.
At The Russell Firm, you work directly with attorney Erin Russell from the first conversation through the resolution of your matter. Your case is not passed to associates or intake staff, and your discussions with Erin remain confidential. She can review the demand, give you a straightforward assessment of where you stand, and discuss the available options. Contact The Russell Firm to schedule a consultation.
