A trademark cease and desist letter assists a party in protecting their Trademark.  If a party believes they have sole rights to something, and they think you’re infringing on those rights, their attorney will write a letter demanding that you cease and desist using their Trademark.  The letter typically threatens a lawsuit if you fail to cease and desist, and is the first warning of a potential lawsuit.

The Doctrine of Laches states there is no set timeframe by which a party must send this letter, and only that it’s sent within a reasonable amount of time.  To know if the party waited too long to send the letter, send them an inquiry asking these three things; when the party knew you were infringing on their rights, how long it took for the party to respond to the infringement, and if the delay caused you any undue hardship. Your response to this letter is critical even if you think the letter is untimely.

DO NOT PANIC

Just because the cease and desist letter threatens a lawsuit, doesn’t mean that a lawsuit will happen. The first thing to do is to keep calm, check your trademarks, and ask yourself; do I have priority use of the name, symbol, writing or device?  Does someone else use a name, symbol, writing or device of a similar nature? If so, how long have I used it, and how long has the other party been using the same material?

CONTACT AN ATTORNEY EXPERIENCED IN TRADEMARK LAW

Do not respond to the letter without consulting an experienced Trademark attorney.  If you respond to the letter, any response could pose as evidence against you in future lawsuits.  Therefore, it is crucial that you have the sound advice of an attorney before moving forward. With your attorney, discuss the answers to the previous questions, and all of your potential options. It is possible that one of your options is in compliance with the requests made in the cease and desist letter. Another possibility is that you are not infringing on the opposing party’s Trademark. In that case, you potentially have a solid argument for disputing the other party’s claims.

RESPOND ACCORDINGLY

With the assistance of your attorney, you need to decide how best to respond to the cease and desist letter. If you decide to comply, you will likely need extended time to do so. Your attorney will request an extension of the time demanded in the cease and desist letter. You potentially have a right to claim that the opposing party’s response to your alleged infringement was untimely and caused you undue hardship. You may even decide that your attorney should respond with your own cease and desist letter.

The attorneys at Dunlap, Bennett & Ludwig have years of experience practicing Trademark law. Located in Washington D.C. near the United States Patent and Trademark Office and the United States Copyright Office, we will provide you with sound representation.  If you received a cease and desist letter, call our intellectual property team at (866) 755-8745.

Posted in: Intellectual Property, Intellectual Property - Trademarks