Yikes! You just opened your mail or email to find a letter stating in large conspicuous font CEASE & DESIST. The letter alleges that you are committing trademark infringement, you must cease using your trademark immediately, and you must pay a large sum of money to avoid a trademark infringement lawsuit. What do you do?
Perhaps you own a new business and you just installed a beautiful (and costly) sign on your building. Or, perhaps you’ve been in business for 20 years and you feel enraged and distraught that someone is forcing you to change the name of the business you’ve worked so hard to build. Maybe the sender attached a state or federal trademark registration certificate to the letter, and you feel like there is no option other than to comply with the letter’s demands.
After the worry, rage and sadness eases, call a licensed trademark attorney. In most instances, a trademark attorney will be able to tell you (1) if you have priority of use that will allow you to continue using your mark, and (2) if you are currently committing trademark infringement.
Priority rules under trademark law can be complicated. There are many exceptions, and as our world continues to move to more e-commerce and virtual business models, the trademark priority rules will continue to adapt to those changes.
In the US, trademark rights can be established by use and/or registration. Priority based on common law use is limited to the geographic area in which the mark is used. Priority based on a state trademark registration is geographically limited to the state of registration. Federal trademark registration provides for nationwide priority that, notwithstanding limited exceptions, typically dates back to the federal application filing date.
Keep in mind, the standard for trademark infringement is “likelihood of confusion,” which requires the use of similar marks in connection with similar products/services.
I regularly speak with potential new clients who have received a Cease & Desist Demand Letter. I have seen cases where the sender states that it owns a trademark registration when no registration exists. I have seen many cases in which the sender owns a recently issued trademark registration; however, my client may have priority of use, giving the client priority to continue using the mark in the client’s established geographic region. In still other cases, the marks may be similar, but the products/services are completely unrelated, and therefore, trademark infringement cannot be established.
Defending trademark infringement claims and/or rebranding are incredibly frustrating and expensive. You can avoid this situation altogether by obtaining a trademark clearance search and federally registering your business’s trademarks from the start.
If you find yourself in this situation, I have helped many clients avoid trademark infringement suits and forced rebrands. If you have received a Cease & Desist Demand or if you need to clear and register your trademark(s), schedule your consultation today.
