Example Response to Cease & Desist Letter Alleging Trademark Infringement
Example response to cease and desist letter alleging infringement. We disclaim all liability and recommend that the reader consult with a competent attorney. Do NOT rely on this letter. This letter does NOT establish an attorney-client relationship nor does it constitute legal advice. If you would like to speak with an attorney, please contact our office by sending an email to firstname.lastname@example.org or by calling 757-253-5729 or 888-388-9614.
VIA USPS Return Receipt Mail [Insert Number], Facsimile to (555) 555-5555, and email to email@example.com
16 Imaginary Way
Nowhere, VA 55555
RE: Denial of frivolous claims and affirmative statement of [your name]’s rights
Dear [sender of cease and desist letter],
This letter is in response to your [date of cease and desist letter] letter sent on behalf of [party claiming trademark infringement].
Denial of [opposing party]’s Claims
[Your Name] denies each and every allegation set forth in your [date of cease and desist letter] letter, including:
[Copy the various allegations made in the letter to you. Generally this will include claims asserting the unauthorized use of their mark or trademark dilution, but may include other claims such as unfair business practices or other related claims]
Affirmative Statements of [Your Name]
The following factors demonstrate [your name]’s use of the mark [your mark] does not infringe or dilute [opposing party]’s mark [opposing mark].
[select all arguments or considerations that may apply]
[Your Name] is a [type of company] incorporated in [date of incorporation] in the state of ________. [your name] has been using the mark [your mark] since [date of first use]. See Exhibit _. Additionally, [your name] has registered the mark [your mark] with the USPTO on [date]. [opposing party] does not have a registration with the USPTO (or, “registered with the PTO on [date], approximately [amount of time] after [your name]”) for [opposing mark]. Consequently, we demand you provide evidence of your first use of the mark.
Similarity of Mark
[your name] asserts that our mark, [your mark], is not similar enough to [opposing party’s mark] to cause confusion. While the marks are similar in some respects, they differ in the following ways: [explain differences in marks]. We assert that for the above reasons [your mark] is distinct from [opposing mark].
Similarity of Goods/Similarity of Trade Channels
[opposing party] is in the business of [briefly describe opposing party’s business]. [your name], however, is in the business of [briefly describe your business]. As our mark [your mark] is used in connection with such different goods and services than those connected to [opposing mark], consumers will not be confused as to the source of the goods and services in connection with either of our marks. As it is unlikely [your name] will offer goods in [opposing party]’s line of business, or vice versa, consumers will easily be able to identify from which source [your name] and [opposing party]’s goods and services are coming from.
Strength of Mark
[opposing party's name or accuser's name] operates its business within the state of _______. [opposing party]’s primary clientele are located within [geographic region]. [your name], however, primarily operates within [geographic region]. [opposing party] does not advertise or do business within [your geographic region]. [opposing party’s mark] is not well known on a national level. Additionally, [opposing party]’s mark has limited distinctiveness. Due to [opposing mark]’s descriptive nature, [opposing mark] is not a strong mark. The weakness of [opposing party]’s mark weighs in favor of [your name].
As [opposing party] is aware, the basis for a trademark infringement claim is consumer confusion. In your [date] letter you did not provide any examples of actual confusion resulting from our concurrent use of the marks [your mark] and [opposing mark]. We demand that you provide examples of actual confusion relating from the use of the mark [your mark].
Length of Time Marks Have Been Concurrently Used
[your name] began using the mark [your mark] on [date]. [opposing party] began using the mark [opposing party’s mark] around [date]. For [length of time] both [your name] and [opposing party] have concurrently used their respective marks without issue. This factor suggests that the concurrent use of our marks [your mark] and [opposing mark] do not result in consumer confusion.
Consumer Care in Making a Purchasing Decision
Due to the expense and importance of [your name (and/or opposing party)]’s goods and services a consumer will take great care in choosing (our/your) product. As a result consumers will be less likely to be confused by the concurrent use of [your mark] and [opposing mark]. This factor weighs in [your name]’s favor.
Number of Similar Marks in Use
[opposing mark] is only eligible for minimal, if any, protection as shown by the number of marks similar to [opposing mark]. A search on the USPTO revealed that the term “[term in opposing mark]” is used in [number] other marks. See Exhibit _. This demonstrates the weakness of [opposing party]’s mark and thus this factor favors [your name]’s right to use [your mark].
[Your Name]’s Intent
[your name] vehemently denies that we made any attempt to misappropriate [opposing party]’s good will or to cause consumer confusion. [your name] was unaware of [opposing party]’s use of the mark [opposing mark] at the time [your name] began using [your mark] (or, “[your name] began using the mark [your mark] before [opposing party] began using the mark [opposing mark], and thus could not have possibly chosen [your mark] as an attempt to appropriate the goodwill of [opposing party]”).
Additionally, [your name] asserts that [opposing party] does not have grounds for a dilution claim. In order to succeed on a dilution claim the plaintiff must show that their mark “is widely recognized by the general public of the United States . . . .” 15 USC §1125(c)(2)(A). [opposing party] fails to meet this requirement because of [opposing party]’s lack of extensive national advertising, limited geographic reach of [opposing party]’s sales, lack of registration for [opposing mark] with USPTO, and lack of national recognition for the mark [opposing mark]. Additionally, the mark [your mark] will not dilute [opposing mark] because the marks are distinct from each other, as noted above (if “Similarity of Mark” argument is not used above, insert here).
Demand to file this letter and attached exhibits in any lawsuit, USPTO proceeding, or any proceeding under the UDRP. NOTE: THIS MIGHT SUBJECT YOU TO JURISDICTION AND/OR VENUE IN ANOTHER COURT. BE CAREFUL AND CONSULT WITH AN ATTORNEY ON THIS TOPIC.
If [opposing party] decides to take any litigious action (e.g., filing of any federal lawsuit, communication with the USPTO, proceedings under the UDRP, etc.), [your name] demands that [opposing party] include a copy, in its entirety, this letter and exhibits. In addition, [your name] further demands that if [opposing party] takes any litigious steps that [opposing party] provide proper service or a copy of such correspondence.
For these reasons and others, [your name] has its own distinctive mark that does not dilute or otherwise infringe upon [opposing party]’s trademark. And, any claims to copyright infringement are denied based upon use of common jargon and expressions in the industry.
Insert Reservation of Rights, Deadlines/Timelines, and Other Factors recommended by your attorney.
Very truly yours,
Last Modified: April 11th, 2010