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.
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The first thing that you need to be aware of, the first thing you need to know is that you’re trying to have an impact on the person receiving the trademark cease and desist letter. That means, that you have to know your trademark adversary. You have to be able to do some research on who this person is so that you can get a sense of what kind of a letter is going to have the best possible result.
Some cease and desist letters are extremely aggressive and they contain remedy language at the bottom which essentially requires not only the payment of damages for trademark infringement, a transfer of intellectual property rights, a full disclosure of any and all other infringing materials, complete disclosure of financial information and a number of other things which may simply preclude what the client is really looking for, which is for the activity to stop.
On the other hand, if you find out that the person who is infringing your trademark is a competitor, and has already told you to pound sand, then you have to take a much more aggressive cease and desist letter stance. You might want to include some of the items that I just talked about.
So, how can you get to know your adversary? How can you get to know the person who you believe is infringing your trademark? Well, in some instances, the identity of the infringer is obvious. They’re operating at a website with full contact information, they’re infringing your trademark, and you can easily send an email. But wait, maybe they’ve engaged in trademark infringement before. There are a variety of both public and private search engines, which can help research that issue. That way, when you send your cease and desist notice letter, you can include all of what you know as leverage against them, raise the stakes.
In some instances, it’s very clear that the person who you believe is engaged in trademark infringement that’s impairing your trademark rights. Sometimes, that person is more innocent than guilty. Perhaps, they didn’t know you existed. Perhaps, they’ve got a legitimate use and weren’t aware that you had a similar mark out there. With that person, you might take a much softer trademark threat letter approach.
And, of course, there’s always the situation where the person who is infringing may be connected on the internet to important people, maybe even an important customer of yours. They may also have the ability to spread either goodwill or bad will about you. In those instances, after assessing these matters with our client, the client and lawyer agree that the best approach is to take a very soft approach on the trademark letter. Perhaps, even to offer a contribution to a charity of their choice in exchange for a transfer of what you believe to be the trademark infringing domain name, or for abandoning the trademark application that they may be pursuing before the USPTO which you believe is similar to your trademark.
So, not all trademark infringement threat letters are the same. There are lots of flavors. There are lots of approaches. And a good trademark lawyer will figure out what approach best works for you before sending out any letter at all.
That’s it for today. Thank you for participating in this Trademark Law Radio Show. Until next time, this is Enrico Schaefer telling you to protect your trademarks or lose your trademark rights. That’s all for today, folks.