DRAFTING CEASE-AND-DESIST LETTERS

Brand owners can get emotional about their trademarks. Whether you’re a family-owned business, a start-up venture, or a marketing professional at a multi-billion-dollar enterprise, you have invested countless amounts of time, money, and effort in your brand.

 That’s why brand owners and protectors get incensed when they see their trademark being infringed or counterfeited. Someone else is profiting from the brand owners’ blood, sweat, and tears. “Send them a cease-and-desist letter! Nail the bastards!”

 

            Take a beat. Let cooler heads prevail. Evaluate the situation. Decide how best to proceed. Maybe a nuclear attack isn’t the best approach.

 

            Here are some factors to consider before shooting off that no-holds-barred, we’re-going-to-sue-you-if-you-don’t-stop-immediately letter.

 

  1. How similar are the trademarks?  Consider the supposedly infringing trademark side-by-side with your trademark.  Are the two marks similar in terms of their appearance? Their sound when pronounced (if applicable)?  Their connotations?  Their overall commercial impression?

 

  1. Do you have priority?  You don’t want to send a demand letter, insisting that the other side is infringing, only to find out that they’ve been using their trademark longer than you have. You’ve just painted yourself into a corner.

 

The response you may get is, “You’re right. These trademarks are too similar to coexist. We been using our mark longer than you have, so you’d better cease-and-desist yourself immediately.” Checkmate.

 

  1. How strong is your trademark?  Famous marks are accorded greater protection than lesser well-known marks.  Similarly, a fanciful trademark (such as Exxon or Verizon) is generally stronger – and easier to protect – than a merely descriptive trademark (such as Honey Baked Ham).

 

  1. Do the parties’ sales territories overlap?  Trademark rights are based on use.  A federal trademark registration does not necessarily give you nationwide rights; it gives you the presumption of nationwide rights, but those rights don’t vest until you have actual use in a particular geographic area.  So, if the infringer is on the West Coast and you’ve only had sales on the East Coast, consult an attorney about how extensive your rights are and how best to word your demand letter.

 

  1. Do the parties’ sales/distribution channels overlap?  The test for trademark infringement is whether or not there is a likelihood of confusion between the marks.  Sometimes, different trade channels alleviate the potential for confusion between two marks.  If your sales are in mass merchandise stores only and the alleged infringer sells only in high-end department stores, the likelihood of confusion may be lower than you think.

 

  1. Are the goods/services all that similar or related?  Brand owners and protectors sometimes fail to understand that their trademark rights do not extend to every imaginable product or service. The strength of a mark – and whether the mark is strong enough to expand into diverse product lines and services – depends on numerous factors, including the length and extent of use, consumer brand awareness, the notoriety of the mark, and whether the mark is fanciful or descriptive.

 

For example, as of this writing, the U.S. Patent and Trademark Office’s online records show that there are 3,130 pending or registered trademarks that include the word “United,” from United van lines to United airlines to Manchester United football club. 

 

I predict that United Airlines would have a hard time objecting to a trademark for paintball tournaments called “United Paint & Play.”

 

On the other hand, United Airlines would have a better case against someone attempting to use the designation “United Air Transportation” in connection with airline services.

 

Before sending a cease-and-desist letter, consider the strength of the mark and the goods and/or services in connection with which it is used. Consider whether suggesting a coexistence agreement might be a better option than demanding cessation and a damage payment.

 

These are only some of the important factors to consider before sending a cease-and-desist letter.  Consult an experienced trademark attorney before shooting off a demand that backfires on you.

 

If you have any questions, please contact IP attorney Art DeBaugh.

About the Author

Arthur J. DeBaugh

Art DeBaugh focuses his practice on trademarks, marketing/advertising/promotions issues, copyrights, and business and corporate matters. 
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