Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

How To Respond To A Trademark Cease And Desist Letter

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.

Understanding How To Trademark A Name: An Attorney Knows Best

So you want to know how to trademark a name, logo, or slogan? It's a great question. Something in the back of your mind tells you these brand names are becoming increasingly important in the internet age. You see other companies building value around their brand names, logos, and slogans. You're wondering whether something more is required than simply doing business under your brand or name. Understanding how to trademark a name is something that trademark attorneys spend entire careers understanding. While the paperwork at the US Patent and Trademark Office (uspto.gov) website simply contains dozens of fields of data to fill in, understanding how to fill in the trademark forms at the trademark office is where expertise and experience comes in handy.

There are a lot of companies out there that will provide you with cheap trademark registration services. Essentially, they replicate the forms that are already available for free at www.uspto.gov. They are self-help trademark registration forms. That means you simply fill them in yourselves. If you were going to do that, why wouldn't you just go to US Patent and Trademark Office website yourself?

Understanding how to fill in date fields is different from understanding how to correctly file an application for trademark registration. If you cannot afford a trademark attorney, that's one thing. However the cost of filing a trademark registration is pretty inexpensive. The return on investment having an attorney who knows what they're doing, filing your mark is typically significant. Why not have a trademark attorney, who is prepared and has filed hundreds or thousands of US Patent and Trademark Office trademark applications, help you fill out the form?

A good trademark attorney will understand how to trademark a name, logo, or slogan much better than you. I would encourage you to speak to a trademark lawyer today before trying to fill out the trademark application form yourself. You'll be surprised how inexpensive trademark registration can be, and what a tremendous benefit it can be to your company. Having a trademark registration for your company name, brand or slogan in today's online world is critical.