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A trademark cease and desist letter (aka trademark threat letter) is an important tool for every trademark attorney. Whether you need to send an infringement letter or respond to a trademark infringement threat letter, we have an attorney who can help you understand your options and the cost involved. Not all cease and desists are created equal. You need to identify and understand who your audience is and what approach will give you the best chance to accomplish your goals. A boilerplate or sample cease and desist letter, or response to a claim of infringement, may only make matters worse. Feel free to review the articles below discussing trademark cease and desist and threat letter approaches or contact a Traverse Legal lawyer today for more information.
Wednesday, 02 October 2013

How To Respond To A Trademark Cease And Desist Letter

Cease-Desist-image
Companies and other entities that own trademarks regularly monitor third party use of what those entities deem to be confusingly similar marks, in an effort to police their trademark and maintain trademark rights. In doing so, it is fairly common for trademark owners to send a cease and desist letter. They send these to anyone making use of a mark that they believe will lead to a likelihood of consumer confusion, which is the test for trademark confusion under US law. If you receive a cease and desist letter from a trademark owner, there are certain steps you should always follow in order to protect your rights.

First, if you are in a position to retain a trademark attorney you should immediately contact your trademark lawyer, who can review the facts and laws specific to each matter. Trademark law is a very fact specific area of law that requires analysis of the trademarks at issue, and a detailed analysis of the likelihood of confusion factors available for assessing these kinds of matters. If you are unable to retain legal council, you should still educate yourself about what options exists.

Second, you should identify whether the trademark owner indeed has a protectable trademark. You may search the US Patent and Trademark Office database, try to identify their existing use, and determine if there has been any adverse decisions against their mark. Moreover, an analysis of where the particular trademark falls along the distinctiveness continuum will likely dictate the next steps.

Third, you should try to identify whether any trademark defenses exist as it relates to your use. For example, you may be subject to the defense of fair use, which includes nominative fair use, and be able to avoid any claims of trademark infringement based on the same. Obviously, identifying a position without the benefit of a fair use defense necessarily requires an analysis of the trademark infringement factors. If you are simply going to rely upon the argument that there is no likelihood of consumer confusion, and thus no trademark infringement, you should be prepared to identify why the marks are different, how the goods and services are different, how the consumers are different, and related items as noted above.

Finally, you should consider what your goals are. If you are simply willing to rebrand, then you may wish to correspond with the trademark owner in hopes of getting the release of liability and amicable resolution. However, if your goal is to continue use of your mark, there may be ways to allow peaceful coexistence between the sender of the cease and desist letter, or alledged trademark owner, and yourself. This may be based upon a consent agreement or some other kind of agreement that limits use in a way, such as based upon geographic location, which would be memorialized in a concurrent use agreement. Regardless, understanding how the matter can be resolved without the need for either a trademark infringement lawsuit in federal court or even proceedings before a trademark trial and appeal board is extremely important.

Saturday, 27 October 2012

Trademark Cease and Desist Letter Samples

A sample trademark cease and desist or threat letter is something that can be very valuable for you as a client in working with a trademark infringement attorney who knows how to draft these documents because it can give you the context of the types of things that your trademark attorney is going to be doing for you in order to stop a third party from infringing your trademark, either on the Internet or in the off line world. So a cease and desist letter for a trademark infringement is one that is very typical, and there certainly are some cease and desist letter forms out there. We are going to post one to the bottom of this show so you could see what one looks like.

Continue reading Trademark Cease and Desist Letter Samples >>
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.

Continue reading Sending a Cease and Desist Letter for Trademark Infringement >>
Wednesday, 07 December 2011

Trademark Infringement Bully Chick-fil-A Sends Cease and Desist Letter

Just because you have a registered trademark, doesn't mean you can send a trademark infringement threat letter to everyone.

Here is a classic case of trademark bullying where someone with a trademark registration sends an  unfounded trademarkinfringement cease and desist letter to "the little guy" and tries to broaden its trademark rights beyond what is allowed by law.

Continue reading Trademark Infringement Bully Chick-fil-A Sends Cease and Desist Letter >>
Monday, 24 October 2011

Not All Trademark Cease and Desist Letters are Created Equal

So you’re the victim of trademark infringement perhaps even trademark infringement on the internet.  You have a sense that you have to contact the party that’s responsible for the infringement.  You’re thinking about sending a trademark cease and desist letter, trying to get the violator to back off, give up the infringing domain name or take down the infringing use on the internet, but wait a minute.

Be careful.  Not all trademark cease and desist letters are created equal.  Sure there are lawyers who will give you some sort of boilerplate cease and desist letter.  They’re all pretty much the same in the boilerplate category, but there is a level of sophistication here that’s required if you’re serious about pursuing the infringer and accomplishing your goal of having the infringing trademark material removed or the domain name that’s infringing your trademark transferred over to you.  Here’s what I mean.

Continue reading Not All Trademark Cease and Desist Letters are Created Equal >>
Monday, 13 June 2011

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?

Tuesday, 22 March 2011

Trademark Infringement Threat Forces Logo Change | Trademark Law Firm Blog

A recent story out of Atlanta Georgia reconfirms the importance of trademark registration, trademark monitoring, and trademark litigation in the event of infringement.  The Florida State University was forced to threaten a trademark infringement lawsuit against two Atlanta area schools for use of the Seminoles’ logo on both helmet and jersey.  As the article quotes, the trademark infringement threat letter sent by Collegiate Licensing Company on behalf of Florida State University noted that the high school’s logo and mascot “may cause consumers to erroneously believe that the university has authorized Salem High School to use its marks.  Additionally, it would dilute the distinctiveness of the marks that the public associates with the university.”

Continue reading Trademark Infringement Threat Forces Logo Change | Trademark Law Firm Blog >>
Thursday, 18 February 2010

The Importance of Trademark Registration: The Value of a Trademark Cease and Desist Letter (Threat Letter)

John L. Welch once again has a great synopsis of a recent Trademark Trial and Appeal Board (TTAB) decision.  It highlights another example of the importance of trademark enforcement efforts, which could include trademark cease and desist letters (also referred to as trademark notice letters or trademark threat letters), UDRP arbitration proceedings, and trademark lawsuits or trademark litigation.

In particular, the TTAB decision considered the trademark enforcement efforts, and the fact that the enforcement efforts resulted in the unauthorized parties having stopped using the trademark, as evidence of the trademark applicant’s exclusive right to use PERFECTING SERUM for skin moisturizer. 

The board concluded that the trademark, which had previously been registered on the Supplemental Register for being merely descriptive, had acquired distinctiveness (i.e. secondary meaning) so as to qualify for registration on the Principal Register.

Continue reading The Importance of Trademark Registration: The Value of a Trademark Cease and Desist Letter (Threat Letter) >>
Thursday, 14 January 2010

Trademark Threat Letters: 6 Reasons Why You Should Take Them Seriously and Why You Should Respond

Trademark attorney Enrico Schaefer discusses what you should do when you receive a trademark (often misspelled "trade mark) cease and desist letter.   Listen as he reviews 6 reasons why you should take trademark threat letters seriously, and what you should do when you receive a cease and desist demand.  A strong response to trademark infringement threat can save you from being sued later. Defending yourself from a claim is critical.

Learn how one trademark attorney uses trademark defenses, such as fair use, and other options to defend a trademark cease and desist letter.

If you are faced with a trademark infringement lawsuit, seek trademark registration, or believe that your trademark rights have been infringed, contact one of our expert trademark lawyers today at 866.936.7447.

ANNOUNCER:  Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement, Copyright Infringement, Cybersquatting, On-Line Defamation, Non-Compete & Trade Secret Law and Complex litigation.  If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.  Now here’s your host, Enrico Schaefer.

Continue reading Trademark Threat Letters: 6 Reasons Why You Should Take Them Seriously and Why You Should Respond >>
Monday, 05 October 2009

Teen Ignores Trademark Infringement Threat Letters From The North Face

Should I ignore a trademark infringement threat letter?

A Missouri teenager has picked up significant publicity after he rebuked North Face’s cease and desist threat letter concerning the North Face mark.  Teenager Jimmy Winkelmann says that his business, The South Butt, does not pose a trademark threat to North Face.  North Face argues that the teen’s use of The South Butt mark is confusingly similar to the use of the North Face mark.  The teen has applied for trademark registration of The South Butt with the US Patent and Trademark Office in International Class 035, namely, for use in association with mail order and online stores that sell clothing.

Ignoring a trademark cease and desist letter is typically not a good strategy.  A cease and desist letter for trademark infringement is something that you need to take seriously, whether you have a registered mark or not. 

Continue reading Teen Ignores Trademark Infringement Threat Letters From The North Face >>
Official Trademark Clearinghouse Agent

Trademark Blog Homepage: Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

Trademark Infringement: Cease & Desist Letter Help

  • Trademark Threats: 6 Reasons To Take Them Seriously
    Trademark attorney Enrico Schaefer explains what you should do when you receive a trademark cease and desist letter. Listen as he reviews 6 reasons why you should take any trademark threat letter seriously, and what you should do when you receive a cease and desist.
  • How to handle a trademark cease and desist letter?
    Trademark Attorney Brian Hall discusses what you should do when you receive a trademark cease and desist letter. What a trademark threat letter? Why trademark owners send trademark threat letters? What you should do when you receive a trademark infringement threat letter.

How to Trademark A Name?

  • How to Register a Trademark - USPTO Stopfakes.gov
    You can establish rights in a mark based on legitimate use of the mark. However, owning a Federal trademark registration on the Principal Register provides several advantages ... here is how.
  • Types of U.S. Trademarks - USPTO Stopfakes.gov
    Specific types of trademarks include: Service marks which identify and distinguish the source of a service rather than a product; Certification marks are used by someone other than its owner, to certify quality or other characteristics of such person's goods or services; Collective marks are trademarks or service marks used by the members of a collective group or organization.
  • Definition of a "Trademark"- USPTO Stopfakes.gov
    A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.
  • How To Copyright and Trademark a Catchphrase!
    Wondering how to trademark a catchphrase? You should also think about how to copyright a catchphrase. Some intellectual property can be protected by both a trademark and copyright registration.

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