Trademark Cease and Desist Letters
Trademark cease and desist letters are demands sent to put a stop to trademark infringement. They are often the step before an infringement lawsuit. Cease and desist letters can come from legitimate and illegitimate sources, so it’s important to conduct your own research into any alleged infringement prior to responding.
In this article, we'll cover:
What Is a Cease and Desist Letter?
Cease and desist letters are sent to anyone infringing upon someone else’s rights, usually used to stop intellectual property infringement, harassment, libel, and slander. Also called a “demand,” a cease and desist letter can be thought of like a friendly (or not so friendly) heads up. It is a call to action, but it is not a legal summons on its own.
As it pertains to trademarks, a cease and desist letter is a warning sent to those who are infringing on another trademark’s rights. (The warning could also be sent to those diluting a famous mark.) Infringement happens when consumers are likely to be confused about who is providing particular goods/services. A form of trademark protection, these letters allow businesses to try and nip infringement in the bud before it requires legal action.
Of course, not every cease and desist letter is valid, and receiving such correspondence is not evidence that you are in the wrong. However, ignoring a cease and desist letter can have extreme legal repercussions. If you are later found at fault, not responding to the letter could be considered negligence.
Most cease and desist letters include the same general information. While some demands may be more thorough than others, to properly inform someone of alleged infringement, the person sending the letter and claiming trademark ownership should include:
- Their name and contact information
- The trademark they claim they own
- The alleged infringement, including proof if possible
- Their rights over the trademark, including the trademark registration number if applicable
- Actions they are requesting, including a time line for you to respond to the letter
- A clear demand for you to stop using the trademark
- A clear outline of future actions, such as filing a lawsuit
If the letter contains these elements, you should have the necessary information to start your own investigation into the alleged infringement.
If you are sent a cease and desist letter with invalid claims, it’s important to figure out if your use of the trademark has confused the other party or if they are trying to mislead you. This can be a sneaky way to intimidate, clearing the way for their trademark to gain distinctiveness at the cost of your own.
Remember, a cease and desist letter is not a legally binding document, so you need to do the leg work to know if what you’ve been told is true.
Want to formalize your trademark protections? Take a look at our Trademark Service!
How Do I Respond to a Cease and Desist Letter?
The first step in responding to a cease and desist letter is determining if the letter has any merit. Anyone can send a letter, and it may or may not be valid.
That said, it’s better not to assume you are in the right, even if you think you have the proper registration and records to prove it.
Consulting with a trademark attorney is the safest option in determining how to move forward after being sent a cease and desist letter. By working with a trademark expert, your responses will come from a place of legal understanding, giving you a stronger jumping off point if litigation is necessary in the future.
As determined by the United States Patent and Trademark Office (USPTO), there are four primary responses to a cease and desist letter:
1. Respond to the Letter
Responding to the letter and contacting the accusing party opens up the line of communication and can even help mitigate the risk of a lawsuit.
For example, are you certain that your mark is not infringing on another? You could deny the allegation and submit proof, such as your state or federal registration information, or copied records of your first use and geographical region.
Are you pretty sure that you aren’t infringing but not certain? You could reply to the senders and request more information, such as their mark’s first use date.
2. Do Nothing
You are welcome to ignore any cease and desist letter—however, there are consequences to doing this. For example, a court could decide you acted recklessly if you are liable for the infringement, and this could worsen any monetary damages you’re determined to owe. But technically, the cease and desist letter on its own is not a legal summons or anything else that demands attention by law.
You can enter negotiations with the senders of the demand letter. This could allow a win-win situation to occur with little damage to either business.
For example, trademarks can be licensed out, which could solve the issue of infringement if both parties are willing to come to a consensus about how and where the mark can be used.
4. File Your Own Lawsuit
Filing a lawsuit before the accuser does can be a good idea if your mark is not infringing, especially if you realize that actually their mark is infringing on yours.
Since there are many ways to react when you receive a demand letter, it can be useful to consider how your brand will be received when responding. For example, after Jack Daniel’s sent a cease and desist letter to author Patrick Wensink, playfully asking him to change the cover of his novel—which resembled the bourbon brand’s iconic label—Wensink met their friendly tone. He published the letter on his website, positively reacting to the demand and the cover change.
How to Write a Cease and Desist Letter for Trademarks
If you’re the one who notices infringement on your mark, and therefore need to send your own cease and desist letter, there are two main steps to keep in mind: complete your due diligence and draft the letter.
Of course, these steps can consist of many things, and you might benefit from hiring a lawyer to draft and send your demand.
Before you send the letter, you’ll want to be certain that the infringement is legitimate. After all, if it’s your mark in the wrong, it can open you up to scrutiny and legal actions from the other party.
On the other hand, if you know about infringement occurring, you may be obligated to take action and defend your mark in order to retain your rights.
That’s why thoroughly researching the situation is the first step in sending a cease and desist letter. This includes answering:
- Who is using the mark?
- Where is the mark being used?
- How is the mark being used?
- What was the potential infringer’s first use date?
- How do their rights (registered, unregistered, etc.) compare to your rights?
Answering these questions might be difficult, but it’s important when deciding if you have a case. You can check the USPTO’s Trademark Electronic Search System (TESS) for information on federally registered marks. Finding information on state-registered or common law marks will require additional research.
Drafting the Letter
When drafting a cease and desist letter, the first thing to decide is if you are drafting it yourself, or are going to hire a trademark attorney to draft the letter for you.
If you want to write the letter yourself, make sure to include all the components of a cease and desist letter. Be clear, include examples of the trademark being used inappropriately, and have a reasonable and detailed time line for next steps. And if you threaten further legal action, make sure you’re prepared to follow through.
Many businesses send clear letters with serious demands, but still end up going to court. For example, when the Seattle Space Needle realized a local coffee shop was infringing on their trademark, they sent a cease and desist letter to protect their trademark’s federal registration, as the reasonable protection of a mark’s validity is an obligation of a federal trademark owner. As no pre-litigation terms were negotiated, the Space Needle filed a lawsuit. They did not request monetary damages and settled out of court.
At the end of the day, what matters is that you are protecting your reputation, your customers’ ease of finding your products or services, and your space in the marketplace. If pursuing legal action against a competitor helps with this, a cease and desist letter is a good place to start.
When you use our Trademark Service, the attorneys at Law on Call are available to draft any trademark cease and desist letters you may need!
Frequently Asked Questions
Can I send a cease and desist letter for a trademark?
Yes, if you believe someone is infringing on your trademark, you can (and probably should!) send a cease and desist letter. This is part of protecting your trademark, which is a requirement of federal registration.
Can my lawyer send a cease and desist letter?
Yes, a lawyer can send a demand on your behalf, and it is often beneficial to go this route. Not only does the letter seem more official coming from legal representation, but it is a way of making sure your i’s are dotted and your t’s are crossed.
Can a cease and desist letter be sent in bad faith?
Yes. While a cease and desist letter is not legal proof of infringement, it can be intimidating. Some businesses choose to send demands without any actual likelihood of winning an infringement case, just hoping that the fear of a court summons will get you to stop using the mark in question. That’s why completing your own due diligence or hiring an attorney after receiving a letter is so important.
Can sending a cease and desist letter backfire on me?
Unfortunately, yes. There are times when sending a cease and desist letter can result in your mark being canceled. For example, if you have federal registration and send a cease and desist letter to a business that has been using the same mark as a common law trademark for longer than you have been using yours, their prior use gives them rights over yours in the geographical region that they’re operating in. This could result in you having to pull your mark from their region or even having your registration canceled by the USPTO if they successfully petition.
Can I sue someone without sending a cease and desist letter?
Technically, yes. However, filing a civil suit without sending a demand letter first could result in a much more expensive, lengthy, and emotional battle than necessary. Giving the potential infringer the chance to resolve the issue on their own can save everyone a huge headache and a lot of money.
How do I know if I’m being sued?
When you are served a complaint and a summons, or an official lawsuit telling you to appear in court, you are being sued. These are sent to your business’ registered agent. While an individual can be their own registered agent, the reception of legal documents is one of the main reasons many business owners outsource this job. A registered agent service like Northwest’s receives your service of processes for you, making sure you’re informed of any legal matters in a timely fashion.
How can I challenge a trademark registration?
You can most easily challenge a trademark registration by opposing the application while it is pending approval. Pending trademarks are published for 30 days in the USPTO’s Official Gazette, giving you time to oppose the application.
What counts as likelihood of confusion?
Likelihood of confusion occurs when two marks are confusingly similar in the eyes of the consumer. This is the basis for trademark infringement. Generally, likelihood of confusion is based on the similarity of the marks in sound or image, the similarity of the goods/services offered, and the strength of the marks.
If the mark was used in bad faith and/or there is evidence of consumer confusion, then a cease and desist letter could easily be the precursor to a lawsuit.