One of the worst nightmares for a business owner is to become embroiled in a law suit, Receiving a letter from a third party claiming that you have infringed their trademarks can be quite distressing. Receiving a cease and desist letter can be stressful and emotionally unsettling. So, how do you deal with a letter claiming you are infringing?
A trademark infringement letter, commonly referred to as a cease and desist letter, generally sets out basic information about the trademark being infringed and what is required from you to prevent a law suit from being filed. Generally, the letter accuses you of infringement and demands that you stop the infringing activity immediately. These letters should be taken seriously. Your actions after receiving a letter from a third party can have consequences. Doing the wrong things can lead you into hot water, while taking appropriate actions can limit risk and liabilities. Consider the following before responding to letters claiming trademark infringement.
Who Is Entitled to Use the Trademark?
Entitlement to a trademark can result from two different actions: use in commerce or filing a trademark application. The first party to complete one of these actions, is the party entitled to the trademark. It is possible for someone to file a trademark application for a trademark and not be aware that another party is already using the trademark but never chose to register. So, you first question to ask yourself is if your use of the trademark precedes the use and filing date of the party sending you the cease and desist letter. It is possible that you could be entitled to ownership of the trademark. However, it is important to note that you must be able to provide evidence of this prior use. A simple claim of earlier use is not generally helpful in these situations. If you believe that you are entitled to the ownership of the trademark, there are steps that can be taken to make this a reality.
Is the Information in the Letter and Trademark Registration Accurate?
When reviewing a cease and desist letter, it is advisable to verify all the necessary details that have been provided to you by the other party. For example, is there a question as to when the the other party actually began using the trademark? Doing some research to confirm the information in the letter is an excellent step as it can provide insight into potential defences or actions available to you in response. When doing your research, it is always important to remind yourself that the other party may be within their rights to be sending you the letter and the information may all be accurate. Even when you think you have done everything right, it is possible to end up on the wrong side of a trademark dispute.
Examine Details of the Trademark to Ascertain If an Infringement Took Place
Trademark infringement occurs when anyone uses your trademark (also referred to as pattern, mark, symbol, design or exact combination of colours etc.) without your permission in association with similar, or the same, goods and services in a manner that would lead the public to believe that you are related in some way to each other. Infringements are not always intentional actions and it is important to understand that trademark owners have to take action when they see an infringement occurring to protect their rights. If they allow infringers to continue to use their trademarks, their trademarks can lose both value and the ability to provide protection. Every case is unique and the details surrounding an infringement can be different in different situations. When common words and phrases are used in a trademark, small changes can be sufficient to prevent infringement. When trademarks are unique, made-up words, or contain arbitrary words, small changes are generally likely to still result in infringement. Having an understanding of your industry and commonly used words can be beneficial in determining whether an infringement is likely to have occurred.
Determine the Intention of the Accusing Party
Not all cease and desist letters are the same. In many cases, a trademark owner is looking to protect their trademarks from infringements. However, is some cases, accusing parties act maliciously in an attempt to gain undue advantage against competitors or seek licensing fees that they may not be entitled too. When trying to make a determination about the nature of the cease and desist letter, it is important to keep emotion out of your analysis. A cease and desist letter does not, by itself, make the other party malicious. In many cases, an accusing party with a genuine interest in protecting their trademarks will work with you to give you time to make a change to a non-infringing trademark. Generally, a determination of the intent of an accusing party should be completed by someone without an emotional connection to your business and the trademark. It is too easy to allow emotions and stress to cloud judgement in these situations.
The steps above can help you to move forward in the right direction. However, keeping a clear and calm head is of the utmost importance at a stressful time like this. Rash decisions and knee-jerk reactions can make matters worse.
Trademark laws and infringements issues can be confusing. If you receive a cease and desist letter, you should be speaking to a trademark agent who can assist you with an appropriate response.