First of all, and most importantly, do not panic. What is a cease and desist letter, you ask? Well, a cease and desist letter is a letter from a third party that objects to your use of a trademark (or other form of intellectual property) on the grounds that the third party believes your use of the trademark is so similar to theirs that the use is likely to confuse consumers into believing there is an affiliation with the third party, and therefore, the third party is requesting that you stop using the trademark, usually immediately. You might also receive such a letter based on a pending trademark application before the USPTO, whether the application is already in use or filed based on intent to use.
If you receive such a letter, do not panic, and do not post anything on social media that might harm your rights. What should you do? You should contact a qualified trademark counsel so that she can evaluate all of the claims in the letter and weigh your options. For instance, some of the things trademark counsel will ask you is about your trademark, your use of the mark, how you use it and the date you first began using it and where. Never ignore a cease and desist letter – the person sending the letter will not go away. Further, you should not attempt to respond to the letter yourself, as doing so could waive important legal rights. Remember, a cease and desist letter is the first step in litigation. Very few such letters end up in a full-fledged court proceeding. Most parties are hoping to settle the claims without going to court, but all the more reason to have your trademark attorney by your side, so be sure you are receiving the right advice along the way.
Lastly, your trademark counsel can work with you to determine the right tone of the response. Many cease and desist letters end up being posted on social media so savvy counsel knows how to strike the right balance between legal principles and public relations for the client. And even your case looks bad, you’ll want to have the best possible trademark representation before you respond to be sure of your next steps and what all of your possible options are to protect your business.
If you or someone you know needs help responding to a cease and desist letter or help protecting their trademarks, please contact us for more information and costs.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.