Cease and Desist Letter & Trademark Infringement Claims

Cease and Desist Letters for Trademark Infringement are where most trademark disputes begin. These threats are important to your business irrespective if you are sending the letter or have received a threat letter and need to respond.  Here is what you need to know.

Our clients fall into two categories. 

1. Clients looking to enforce their Trademark Rights:  Some clients hire us to analyze and send a cease and desist letter claiming trademark infringement. These clients need an analysis on the strength of their trademark  rights and claims of infringement. If you don't protect your trademark, you could face a claim of waiver or laches which preclude you from asserting your rights in the future.  In short, you could lose your trademark altogether, even if it is registered.
     
   
2. Clients who are being accused of Trademark Infringement:  Some clients have received a trademark infringement cease and desist letter and need an experienced trademark attorney to analyze the issue and respond. For these clients, they are either looking for an exit in exchange for a general release of claims or looking to fight back and defend their own brand or use of the words in dispute. If you ignore the threat letter, you could be forcing the other side to file a tradeamrk infringement lawsuit, something most clients seek to avoid.

Whether you need to enforce your rights, or defend against a threat letter or cease and desist demand, our trademark attorneys have you covered.  Contact a trademark specialist today to better understand your options and the cost of achieving your goals. If you don't protect your business, who will?

Personal Names can be Protected as Trademarks: Just Ask John Elway

Huffington Post:  In a letter from his trademark attorneys, legendary quarterback, John Elway, asks a Colorado-based punk band that goes by the name 'Elway' to stop using his personal name. 

Personal names are protected under the ACPA, UDRP and other trademark laws.  The trademark attorneys for John Elway took an interesting approach.  Instead of sending a cease and desist letter, they politely asked the band to consider changing its name.  It certainly doesn't look like there's much merit to a trademark infringement claim under the facts presented in the article.  The band makes no reference to football or John Elway in any of their songs, artwork or marketing.  It appears to be purely coincidental that the band name is also the same as the famous celebrity football player John Elway.  If John Elway really wants the band to change names, he probably is going to have to pay them some money.

Related stories:

Trademark Licensing: Trademark Owners Must Maintain Control and Quality

The Seventh Circuit affirms abandonment of mark as a result of naked licensing:

In the matter of Eva’s Bridal Ltd. v. Halanick Enters., Inc., “Eva’s Bridal”, a bridal shop established in Chicago in 1966 by Eva Sweis, was sold to the defendant for $10, subject to a $75,000 licensing agreement for use of the name and mark “Eva’s Bridal.” After the license agreement expired in 2002, the defendant continued to use the name and mark without paying the $75,000 licensing fee under the expired agreement.  In 2007, the plaintiff, Eva’s Bridal Ltd, filed suit under the Lanham Act, but the case was dismissed because the court ruled that the plaintiff had abandoned the mark by engaging in naked licensing.  Put another way, the plaintiffs allowed the defendant to use the mark without maintaining control and quality of the goods, services or business on which the mark was being used.  On appeal, the Seventh Circuit affirmed the lower court’s decision stating that since the plaintiff did not exercise any control over the defendant’s operation of the shop, be it through licensing or consistent quality, that the plaintiff had lost the right to enforce the mark.