Cease and Desist Letters
A cease and desist letter should be based on both the facts and the law, form letters do not take either into account. Making a material misrepresentation in a cease and desist letter could backfire. Facts matter.
Trademark or trade name enforcement against confusingly similar names or marks can be started by using cease and desist letters. Be aware that enforcing trade names or trademarks that are not federally registered is not easily done. The general rule of thumb is that an unregistered business name or trademark (not registered with USPTO) only accrues rights in the geographic area where the trade exists and then those rights depend on a number of other factors including how distinctive the name is, how the trademark or business name has been used, if there is a likelihood of confusion and other issues. A USPTO registration has presumptive rights across the all the states of the US. Ultimately, for unregistered marks, facts of use and trade must be considered and a court may have to be the judge on whether or not confusion exists and who has priority of use for the name and in what context.
One of the advantages of a registered trademark is that for internet web pages and advertising, third party providers like domain name registrars, host providers, web site builders, Facebook, Twitter, etc. have policies that favor registered trademarks. Taking advantage of these policies can help to protect your trademark rights.
Before sending out a cease and desist letter, a short investigation (like the investigations that Not Just Patents® Legal Services does before they send out cease and desist letters) is a good idea. An investigation might show that the business that you were about to send a cease and desist letter to may have actually started using the trademark or trade name (business name) before you or has acquired valid rights in some other way. Sending them a cease and desist letter could be like striking a hornet’s nest and standing still with the stick in your hand.
ONE REASON TO BE CAREFUL WITH CEASE AND DESIST LETTERS: In a recent TTAB case, MILLER v. MILLER, 91184841 (TTAB 1-
Not Just Patents can draft and provide you with a cease and desist letter to help you to enforce your trademark, trade name, trade dress, domain name rights, or patent rights. We can help you to oppose or cancel registering or registered trademarks that infringe on your prior rights or harm your business based on some other grounds for opposition or cancellation. We also help businesses answer cease and desist letters to help to avoid litigation where a use may be noninfringing or in good faith. Many attorneys make their living from litigation and may look for ways to turn situations that may be noninfringing or in good faith and turn them into lots of billable hours. We have seen cease and desist letters from large law firms representing large companies that do not do any research on facts before they send out cease and desist letters trying to scare businesses into giving up their legal rights. We may be able to help you if you are in this situation.
We also see cease and desist letters from businesses that are completely founded in fact because many new businesses do not even try to avoid conflicts. Many businesses launch using trade names, trademarks, brand names, etc. that have not been properly verified for noninfringing use. We may be able to help you too if you are in this situation but we would advise new businesses to seek help staying clear of infringing from the beginning. Starting over with a new business name, trademark, or domain name can result in significant loss of business especially if that DO OVER must happen quickly in order to avoid intentional infringement. We would advise businesses to plan for success. A Strong Trademark, Strong Domain Name, Strong Trade Name or Broad Patent is a more valuable piece of intellectual property.
What’s the Difference Between a Trade-
Trademark identifies goods or services and Trade Name identifies businesses, vocations or occupations
The terms "trade-
"The term 'trade-
"The terms 'trade name' and 'commercial name' include individual names and surnames, firm names and trade names used by manufacturers, industrialists, merchants, agriculturists, and others to identify their businesses, vocations, or occupations; . . ."
Trademark and Trade Name rights are not the same
[T]rade names symbolize reputation of business as whole, whereas trademarks and service marks are designed to identify and distinguish company's goods and services; as with right to trade name, right to control use of trademark depends on priority of use. Stephen W. Boney Inc. v. Boney Services Inc., 44 USPQ2d 1225 (9th Cir. 1997).
What is the Purpose of a Cease and Desist Letter?
The purpose of a cease and desist letter is to inform the recipients of allegations of infringement, to give them a chance to discontinue the infringing activity, and to protect the sender's legitimate legal rights. FUTURISTIC FENCES, INC. v. ILLUSION FENCE, CORP., 558 F. Supp.2d 1270 (S.D.Fla. 2008). The purpose of a "cease and desist" letter is to obtain an out-
How Should A Cease and Desist Letter Be Sent?
As a general rule, Not Just Patents® uses email as a supplement but not as a primary way to send a cease and desist letter. There are several reasons that deal with verification and professionalism. Regular First Class mail or Certified Mail with a signature required is a favored way that we use to send cease and desist letters. Undeliverable mail can be used as evidence of attempts to provide notice whereas email can be filtered without the sender’s knowledge. There is a legal presumption that postal employees discharge their duties in a proper manner and that properly addressed, stamped and deposited mail is presumed to reach the addressee in due course and without unusual delay, unless evidence to the contrary is proven. Legille v. Tegtmeyer, 382 F.Supp. 166 (D.D.C. 1974).
Finding out that someone is no longer at an address can be valuable information so even undelivered mail serves a purpose. If it takes multiple letters just to reach someone (which is often true with new or small businesses) but they claim in a legal document somewhere that the addresses are legal and valid, you may have reason to believe otherwise.
But professionalism is a another issue. Sometimes people shoot off angry emails that they later regret or that do not meet a well-
How Long to Respond?
Timing is All About Notice: Due Process Requires Time
Giving someone ten (10) days to respond to a cease and desist letter may not be enough. The purpose of a cease and desist letter is to provide notice. Under the Anticybersquatting Consumer Protection Act (ACPA), courts have ruled that eight days is not enough and that 19 seems to be more in the right ballpark.
In Lucent Technologies, Inc. v. Lucentsucks. Com, 95 F. Supp. 2d 528 (2000), “An elementary and fundamental requirement of due process in any proceeding which is to be accorded finality is notice, reasonably calculated, under all the circumstances, to apprise interested parties of the pendency of the action and afford them an opportunity to present their objections.... The notice must of be such nature as reasonably to convey the required information, and it must afford a reasonable time for those interested to make their appearance.. . .”
“[P]otential parties to a court action share the same tendency as the rest of us to take vacations of two weeks or more without leaving a forwarding address, and that, when they make a permanent change of residence, mail forwarded by the United States Postal Service arrives more slowly than mail addressed directly to the new residence. . . .Due Process requirements contemplate the time reasonably necessary to digest the notice and to find an attorney.”
Trademark Rights and Enforcement
A Report to Congress titled Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting (pdf) (html text searchable version) (April 2011) has recently looked at the issue of cease and desist letters (amongst other things) and evaluates whether trademark rights have been enforced beyond a reasonable scope. The Report discusses cease and desist letters and what they typically contain and how they are typically responded to. The following sections are extracted from this report:
Trademark Enforcement Steps-
Trademark enforcement efforts usually begin with drafting and sending a demand letter, also known as a “cease-
Typical Format of a Cease and Desist Letter
The typical format of a cease-
The demands in the letter and the tone (threatening or conciliatory) may vary depending on the facts and circumstances presented. If a violation is sufficiently problematic that the mark owner is prepared to litigate immediately, the letter may threaten such litigation if the violator fails to comply with the demands set forth in the letter. The letter may even be accompanied by a courtesy copy of a complaint that has been or will be filed if the matter cannot be expeditiously resolved to the satisfaction of the mark owner.
How to Respond to a Cease and Desist Letter
Upon receiving a demand letter, the recipient may respond on its own or consult with trademark counsel. Often, counsel will send a “hold” letter to buy time to investigate the merits of the mark owner’s claims, consult with the client, and prepare a response. Responses to a cease-
1) The alleged violator agrees to comply with the mark owner’s demands and/or stops using the offending trademark. If this occurs, the parties may memorialize this in writing with either a written response letter that resolves the matter, or if the matter is more complex, via a settlement agreement.
2) The alleged violator does not respond within the specified time frame. At this point, the mark owner often will send a follow-
3) The alleged infringer denies the allegations of infringement and/or asserts various legal defenses justifying its ability to use its mark, files a declaratory judgment action, or offers a compromise solution for going forward. If the response presents compelling facts or legal points that the mark owner may not have known or failed to consider, the owner may decide to pursue settlement or drop its claims altogether (e.g., if it turns out the alleged infringer can show that it has priority of use). If the mark owner does not believe settlement is possible, the mark owner usually will continue to pursue the matter by filing a lawsuit or initiating a cancellation or opposition proceeding with USPTO’s TTAB.
Please call Not Just Patents for cease and desist letters or responses to cease and desist letters at
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