You have received a cease and desist letter alleging that you are infringing on another’s trademark. What do you do?

As I have said before, the first thing you do is go to see an experienced trademark attorney who has experience with litigation. First your attorney will explain to you that they can only stop your use of the mark with a court order and to get this they must prove two things.

1) They must convince a judge that they have suffered or will suffer, irreparable damage without an immediate court order barring your continued use of the mark; and 2) then must convince a judge that they will likely win in court and that they have superior rights to the mark (this is another reason why registering your trademark is so important).

Next, your attorney will find out as much as they can regarding the complaining party and their use and registration of the mark in question. Only after consulting with your attorney should you make a tactical response to the cease and desist letter. There are several ways in which to respond.

First, you do nothing. You are convinced that they have no case and therefore, you simply don’t respond. In my opinion this is not a favorable option as you risk them filing a lawsuit just to get your attention.

Second, you use the “German Shepherd Response” and inform them under no circumstances will you stop using the mark that you are shocked by their allegation and find it insulting. This is also not the best option available as this has a higher than average likelihood of fanning the flames into a full blown trademark battle.

Third, you can reply with a calm and polite letter stating the facts as you see them and explaining that you disagree with their claim of infringement. The tone of the letter makes it clear that you are reasonable, flexible and willing to engage in a discussion. This strategy does not lock you into any particular overall strategy and you can always dig in your heels and become more aggressive later. However, this is by far the best and most cost effective response to putting you down the road to resolving the dispute.

Next you will want to plan your negotiation strategy. Negotiation is far less expensive than litigation. However, it is non-binding. It is voluntary and is a good faith effort on both parties parts to resolve the dispute. It may be possible that such a resolution would entail you voluntarily restricting the use of your trademark to only certain industries or products (for example, jackets but not shoes). The question for you at this stage is, can you live with it if the proposed modifications are made?

If the party alleging infringement shows that their position is superior it may require you to change your name however, this need not be a disaster but rather may even be a marketing opportunity.

In the end, it is important to remember to constantly reevaluate your position and relative strengths and weaknesses of your case as well as the relative costs of defending a trademark infringement lawsuit.

For more information or to register your trademark today please contact us directly.