An inexpensive way to preserve trademark rights and enforce trademarks is by sending trademark cease and desist letters to alleged trademark infringement.
There are several ways trademark owners can enforce their trademark rights from picking up the phone and calling alleged infringer or filing a federal trademark lawsuit. The most common enforcement mechanism is sending a cease and desist letter.
Sample header of a trademark cease and desist letter
Benefits of Sending a Trademark Cease and Desist Letter
The main benefit of sending a trademark cease and desist letter to an alleged infringer is it puts the infringer on notice that they are infringing on someone’s trademark rights. In many cases, companies and entrepreneurs who infringe third party trademark rights do so accidentally. They may have not conducted a trademark search (or ignored the search results), or maybe their search missed an important trademark. A company accused of trademark infringement, that they did not even know was occurring, often agree to stop use of the trademark or phase it out once they are put on notice of the alleged infringement.
Even if the company receiving the trademark cease and desist letter does not immediately agree to stop using the alleged infringing trademark, sending a cease and desist letter preserves a documented paper trail of alleged trademark infringement. It is important to enforce trademark rights, and when a company does not go after a trademark infringer relatively quickly, they risk losing their ability to enforce their trademark rights in the future based on a laches defense.
What to Include in Trademark Cease and Desist Letters
Trademark attorneys each have individual styles in drafting and sending trademark cease and desist letters, however, all cease and desist letters must include several important facts. The three most important things to include are: 1) description of the trademark rights of the proper trademark owner; 2) how the use of the infringing trademark infringes on the rights of the rightful trademark owner; and 3) a request the alleged infringer cease and desist all use of the infringing trademark.
The first thing to include is what trademark owned by the company sending the letter is being infringed on and what rights does the company have for that trademark. For example, “Company X owns a federal trademark registration for ACME, Reg. No. 555, and has used the trademark for ten years in connection with anvils.”
The second important part to any cease and desist letter is to describe the infringing trademark being used by the alleged infringer. Following on the example above, “Company Z’s use of ACME in connection with its new anvil products infringes Company X’s trademark rights to ACME because a, b and c reasons.”
After establishing the trademark rights that are being infringed and how they are being infringed, it is common to ask the alleged infringer to cease and desist all activity regarding the infringing trademark. Most people or companies receiving a cease and desist letter will want to know more and may respond in writing or with a phone call. Ideally, the company receiving the letter will be persuaded to stop the alleged trademark infringement after some cordial back and forth.
Things to Keep in Mind
When sending out trademark cease and desist letters, there are several things trademark lawyers (or non-lawyers) need to be aware of, most importantly, who is sending and who is receiving the trademark cease and desist letter. Is a large corporation sending the letter to another large corporation who has in-house lawyers to deal with the issue? Is the letter from two small businesses in intense competition with each other? Is it from in-house trademark counsel at a corporation to a small business with only one employee? In other words, trademark lawyers need to be aware of who is going to open and read their cease and desist letter.
For example, when a multi-billion dollar corporation sends a threatening cease and desist letter with a serious tone to a stay at home mom who started selling jewelry online under a trademark that infringes the multi-billion dollar company, she may feel justifiably bullied and publish the letter online where the internent mobs will share it all around creating negative publicity. Whereas, if she received a phone call first and then a softer cease and desist letter based on the phone call, she may be more cooperative to the demands of the letter.
As mentioned above, the internet has given everyone the ability to publish anything online, including cease and desist letters. So trademark attorneys and people drafting cease and desist letters should never send a letter they would not defend if it was published online. This is especially important for trademark counsel representing large corporations who may be viewed as bullying small mom and pop type stores.
Do you have any question about trademark cease and desist letters or want an attorney to draft and send one on your behalf? Feel free to contact us for a free trademark consultation today!