Friday, 30 December 2011

Sending a Cease and Desist Letter for Trademark Infringement

You need to have a trademark attorney who understands trademark analyze your trademark and determine whether or not a cease and desist letter is appropriate, and whether or not a notice letter is appropriate. Additionally, you need to understand your ultimate goal . Is your goal to have them cease and desist or to enter into some sort of joint use agreement which allows both parties to continue to use the mark within certain limits? These are all really important items that should be thoroughly analyzed by a trademark attorney.

 

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

Welcome to Trademark Law Radio.  My name is Attorney Enrico Schaefer, and I specialize in trademark infringement, trademark cease and desist letters, trademark protection, and trademark registration.  Today, we are going to be talking about cease and desist letters for trademark infringement.


A cease and desist letter can be sent for a variety of different reasons on trademark issues.  A cease and desist letter for trademark infringement is perhaps the most common.  When do you want to send a trademark cease and desist letter?  Well, the answer to that is much more complicated than you would think.  Sometimes it makes sense to send the letter, but sometimes it does not.  Sending a cease and desist letter for trademark infringement is going to potentially put the other side on notice that you have trademark problems. 

So, let’s say you don’t have a trademark registration.  One of the issues that a good trademark attorney is going to want to take a look at is, well, should we get the trademark in the registration database at the USPTO (at the trademark office) before sending a cease and desist letter?  If it turns out that a review of the client’s trademark rights shows that the trademark has a variety of different problems, either with the registration itself, with the first use in commerce date or because of other third party uses of the trademark, then, sometimes, the last thing you want to do is send a trademark cease and desist letter for infringement because, keep in mind, they’re going to analyze all these issues.  They’re going to analyze your trademark rights in order to respond to that cease and desist letter.  So, I have actually seen circumstances where our clients have received a cease and desist letter for trademark infringement by a complaining party.  And when we analyzed that complaining party’s trademark, it turns out that our client was the first to use the trademark in commerce, but simply didn’t get it registered with the trademark office.  Keep in mind, the party who is first in use, who was first in time, is going to have superior trademark rights, even if the other party has a registered trademark.  So, first in time still wins.  So, we will reverse that cease and desist letter for trademark infringement by noting that they are, in fact, infringing our client’s trademark.

So, there are many things that you need to consider before just firing off a cease and desist letter for trademark infringement.  You need to have a trademark attorney who understands trademark analyze your trademark and determine whether or not a cease and desist letter is appropriate, whether or not a notice letter is appropriate, and you need to understand what the goal is.  Is your goal to have them cease and desist or is your goal to enter into some sort of joint use agreement, which allows both parties to continue to use the mark within certain limits?  These are all really important items. 

People often say, “Well, can’t you just send a letter?  Wouldn’t it keep my costs down as a client if you just go ahead and just send one of your boilerplate trademark infringement letters or just use a sample or template cease and desist letter.”  That is something that a good trademark lawyer will never do because you could be creating problems for the client.  You could be hurting the client if you do not analyze the strength of the trademark and the relative trademark rights up front before even considering a trademark cease and desist letter.

I am Trademark Attorney Enrico Schaefer, that’s all for today.

You’ve been listening to Trademark Law Radio.  Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.

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