A registered trademark is an essential step in creating a business, and it is a vital asset to protect. Acquiring a trademark prevents other companies from selling their goods or services using a mark that closely resembles yours. This protection ensures that customers do not get confused between different businesses.
When another business infringes on your trademark, one of the ways to respond is by issuing them with a cease and desist letter. The document requests the infringer to stop or consider stopping using the infringing trademark. There are several things to consider when sending or receiving a cease and desist letter:
Sending a cease and desist letter or email
Some of the factors that a trademark owner should consider before sending a cease and desist letter include:
- Whether the trademark is active
- The registration status of the trademark
- Whether the buyers will be confused by the infringing mark
- The effect of the infringers’ mark on the power of their mark
- Whether the infringer is dealing in the same goods or services
- The geographical location on which the infringer intends to use their mark
- The market where the infringer wants to sell their goods and service
These factors are essential in determining the likelihood of confusion for consumers. They also form the basis for pursuing a lawsuit if the infringer decides to continue using the mark even after receiving a cease and desist letter or email.
Receiving a cease and desist letter or email
It is important to note that receiving a letter or email from the trademark owner does not mean that they have filed a lawsuit against you. To sue you, the trademark owner must serve you with two documents; a complaint and a summons.
If you have received a cease and desist letter or email, it is essential to be careful with how you respond. The response you provide has significant legal ramifications, and you should consider consulting a legal professional before giving any reply.
You can also request the trademark owner to provide you with more evidence that shows that you are infringing on their mark. This includes details about the mark’s federal registration status, the geographical region where the mark is being used, and the date of first use.
You can try to negotiate with the trademark owner to let you use the mark on mutual agreement. Finally, you can decide to file a lawsuit and sue the mark owner for a “declaratory judgment” indicating that your trademark does not cause infringement.
Reaching an agreement
Whether you sent or received a cease and desist letter or email regarding a trademark infringement, reaching an agreement with the other party may be challenging. Educating yourself on the legal right of both parties will help you determine the best next steps to protect your business.