Responding to Cease & Desist
The following does not constitute legal advice.
Often a business will send out a Cease & Desist Letter alleging trademark infringement in the hope that the letter alone will be enough to convince the recipient to give up it’s rights. These letters will often be generated without much consideration as a cheap way of scaring other businesses from using similar marks. Click here to see our March 2010 google.com coupon for responding to cease & desist letters.
Below is an introduction identifying what one may want to consider in responding to a Cease & Desist Letter. Any reader should beware that it is not as simple as plugging in data to a form letter and mailing it out. To properly respond to a Cease & Desist letter, one must understand all rights, remedies and consequences of making possible admissions against interest as well as understand there is infringement of mark.
A Cease & Desist Letter regarding trademark infringement will have either or both of the following two claims:
- <!–[endif]–>Trademark infringement - Mark is confusingly similar to the accuser’s mark, and/or
- <!–[endif]–>Trademark Dilution – Mark “dilutes” the accuser’s mark.
The basis for a trademark infringement claim is that both parties using both marks will confuse consumers as to the source of the goods or services associated with the mark. Courts consider the following factors in determining whether a mark infringes on another trademark holder’s right:
- <!–[if !supportLists]–> <!–[endif]–>First Use – Courts will generally hold that the first party to use a mark has a superior right to the mark.
- <!–[if !supportLists]–> <!–[endif]–>Similarity of the Marks – Often infringement will be claimed when the marks are not identical (Xerox might claim infringement against the brand Zeerox). The greater the difference in the marks, the less likely that infringement has occurred.
- <!–[if !supportLists]–> <!–[endif]–>Similarity of Goods – The greater the difference in the type of good or service offered, the less likely there is infringement. For example, Apple sells consumer electronics; another electronics store would infringe Apple’s mark by selling under the “Apple” name. This does not stop you from naming your hair salon Apple, as no one would think that the Apple computer company is in the business of styling hair.
- <!–[if !supportLists]–> <!–[endif]–>Similarity of Trade Channels – Do you and the sender’s company advertise through the same medium to the same clientele? The more similar the trade channels, the more likely there is infringement.
- <!–[if !supportLists]–> <!–[endif]–>Strength of the Mark – The stronger the mark, the more likely there has been infringement. There are numerous factors used to determine the strength of a mark:
<!–[if !supportLists]–>o <!–[endif]–>Is the mark recognized nationally or in your geographic area?
<!–[if !supportLists]–>o <!–[endif]–>Is there a large advertisement campaign with the mark?
<!–[if !supportLists]–>o <!–[endif]–>Does the mark describe the product it’s connected to? (Computer Services, Inc. describes their product, while Yahoo!, Inc. does not)
- <!–[endif]–>Actual Confusion – Is there any evidence that consumers were actually confused by the similarity of you and the sender’s mark? If there has been actual confusion the mark is more likely to be infringing.
- <!–[endif]–>Length of Time Marks Have Been Concurrently Used – The longer both marks have been used at the same time the less likely there is infringement.
- <!–[endif]–>Consumer Care in Making a Purchasing Decision – Consumers will spend less time to examine a product that’s $2 than they will to examine a product that is $2,000. As such, the consumer buying the $2,000 product will pay closer attention to the mark. The more care a consumer takes in buying a product, the less likely the mark attached to the product is infringing.
- <!–[endif]–>Number of Similar Marks in Use – the more marks that are in use that are similar to the sender’s mark, the less likely there is infringement.
- <!–[endif]–>Intent – While difficult to prove, evidence that you intentionally copied the sender’s mark will likely lead a Court to rule that there is infringement.
Dilution is not based on the concept of consumer confusion. Instead, the basis for a dilution claim is that the marks are extremely similar/identical and the sender’s mark is nationally recognized. Courts look to the following to determine if a mark is nationally recognized:
- <!–[if !supportLists]–>Duration, extent, and geographic reach of advertising.
- <!–[if !supportLists]–> <!–[endif]–>Amount, volume, and geographic extent of sales for goods and services.
- <!–[if !supportLists]–> <!–[endif]–>Evidence of actual, national recognition.
When responding to a Cease and Desist Letter some of these factors will be in favor of no infringement, while other factors may be in favor of infringement. At the very least, it is worth considering only including in a response letter, those factors that support there has been no infringement, tailored to specific circumstances of the marks at issue.
Before sending a response to a cease and desist letter, one may want to further consider some additional factors. While a response may result in stopping pursuit of infringement against the accused infringer, it may also prompt a business to commence litigation. Another thing to consider is whether the accuser is infringing your mark and whether you want the accuser to stop using its mark if it is similar to your mark. In such circumstances, one may send a response to the cease and desist letter. However, that response letter should be structured much differently than the example response. The example response on this web site asserts that both marks can be used concurrently without issue. This assertion will eviscerate any future claims that one might want to bring against the accuser for trademark infringement.
If one sends a Response to a Cease and Desist letter, then be aware that this document can have a very significant, and possibly negative, effect on one’s business. Accordingly, we strongly recommended any business that receives a Cease & Desists Letter contact an attorney to obtain legal advice on the matter.
Again, the above information is not intended to provide legal advice. Anyone reading the introduction as well as the example response to a trademark cease and desist letter understands that this is merely an example, there is no attorney-client relationship with Bambi Faivre Walters, PC, and this example is not customized to specific facts and considerations that one needs to consider when responding. This is NOT a comprehensive example and should not be relied upon.
Last Modified: February 21st, 2010