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.
Today we are talking about trade mark threat letters also known as trademark infringement notice letters.
Trademark threat letters are sent by the thousands every single day and received by the thousands every single day. The number of available words in the world continues to diminish as a result of domains names in internet marketing. There are very few words left that are unique and as a result people are fighting over the use of those words as marks. So, a trademark threat letter is typically sent by a trademark holder or alleged trademark holder by their lawyer alleging that you are somehow using their term or a similar term in a way which is likely to cause confusion among consumers as to source and origin. Here are six really good reasons why you need to take these trademark threat letters seriously and respond appropriately:
(1) you need to understand the trademark issue. There is a lot of misinformation out there about trademark rights, thousands of different pieces of information about whether a trademark is... constitutes infringement exist, by way of example only, some people think that if the literal word with the literal spelling isn’t being used by them then there could be no infringement. Trademarks protect not only the literal word, but phonetically the sound of the word and space around the word, meaning that even though you’re using a word which is different, or a phrase which is different than the trademark holder, if a consumer is likely to be confused by the similarity as to source and origin, you could be guilty of trademark infringement. So, (1) you need to understand the issue;
(2) you need to get educated about your own trademarks and uses of words for marketing purposes. You need to be educated about your trademark rights. You need to be educated about the risk of violating someone else’s trademark;
(3) you need to understand your risks. If tomorrow you could no longer do business as your company name, If your domain name was taken from you, and thus your website brought down, what kind of impact would that have on your business? In many instances, companies are betting the farm; literally betting their existence on trademark rights which they may or may not have. You need to understand your risk on trademark issues;
(4) you need to benchmark your legal position and the only way to do that is to respond. That means you need to have a competent trademark lawyer do the research, find out what your defenses are, find out how strong the trademark holder’s mark is, and a number of related issues. That needs to be captured in a written response which puts in play your best defenses and creates a benchmark for your legal position moving forward. If you don’t create a benchmark, you are going to go backwards if the matter should ever go into court;
(5) you need to try and find resolution and common ground with the trademark holder. Many of these trademark threat letters are resolved amicably between the parties without any further litigation or activity;
(6) you need to avoid litigation. If you do not respond to a trademark threat letter, you run the risk that the very next step will be service of a federal trademark infringement court complaint that’s served upon you by the local process server. Whatever it may cost you to have an attorney research the issue and respond, is a small fraction of what it will cost you if you end up having to go to court.
Trademark litigation can be very expensive, running into the hundreds of thousands of dollars. So, penny-wise and pound-foolish is not the position you want to be in. You should contact your attorney, you should have them review the matter, and you should have them respond putting your best defenses in play. Try and find resolution, make sure you benchmark your position, and avoid litigation at all costs.