March 14, 2019
You’ve put a great deal of blood, sweat, and tears into building your brand and when you discover that your trademark is being infringed, you are probably more than ready to go to battle to get the use of your trademark to stop immediately. While this matter may end up in court, the first step would be to write a cease and desist letter, which serves as a starting point for trying to remedy trademark issues.
A trademark cease and desist letter requests that another party stop using a trademark in its business practices. Parties who fail to stop using a trademark that they don’t have the rights to can find themselves the target of a lawsuit.
Why write a cease and desist letter?
Writing a cease and desist letter can accomplish compliance relatively painlessly without the need for a possibly long and expensive trial. However, writing a cease and desist letter is not to be taken lightly, it’s best to first consult with an experienced intellectual property attorney.
A cease and desist letter typically includes the following sections:
- Identification of your business, you mark, and any U.S. trademark registrations you may have.
- Statement regarding the issue of the conduct/use of the trademark.
- Discussion of the degree of similarity, identity, or overlap between the goods/services you promote and the other party’s goods/services.
- Statement regarding the strength of your mark (which is based on length of use, advertising, degree of public recognition, market position, etc.)
- Discussion on how there may be overlap in trade and promotional and advertising channels.
- Statement detailing evidence of customer or client confusion, if any (such as a customer calling the other party thinking they were calling your business).
- Mention of particulars of act of bad faith in use of mark, if any.
- Discussion of actions previously taken (such as getting extension of time to object to a trademark application).
- Demand for action or other requests.
- Inclusion of a time period in which response is requested.
- Disclosure of penalties that will fall upon the other party for not taking the requested action – will you litigate?
- Inclusion of a disclaimer that the letter does not constitute a complete declaration of all of your rights, whether they be stated or unstated.
- Attachment of relevant exhibits such as copies of your marks and of the other party’s goods or advertisements of services showing the marks at issue.
For more information on what to include in your letter, click here.
Once the letter has been completed, edit it closely and send it to the recipient by a trackable shipping method. Be sure to go over your content with a critical eye to make sure you have a compelling case for infringement. And at any point you need assistance, consult with a licensed attorney.
