Cease and Desist Letters

A cease and desist letter should be based on both the facts and the law, form letters do not take either into account. Making a material misrepresentation in a cease and desist letter could backfire. Facts matter.

Trademark  or trade name enforcement against confusingly similar names or marks can be started by using cease and desist letters. Be aware that enforcing trade names or trademarks that are not federally registered is not easily done. The general rule of thumb is that an unregistered business name or trademark (not registered with USPTO) only accrues rights in the geographic area where the trade exists and then those rights depend on a number of other factors including how distinctive the name is, how the trademark or business name has been used, if there is a likelihood of confusion and other issues. A USPTO registration has presumptive rights across the all the states of the US. Ultimately, for unregistered marks, facts of use and trade must be considered and a court may have to be the judge on whether or not confusion exists and who has priority of use for the name and in what context.

One of the advantages of a registered trademark is that for internet web pages and advertising, third party providers like domain name registrars, host providers, web site builders, Facebook, Twitter, etc. have policies that favor registered trademarks. Taking advantage of these policies can help to protect your trademark rights.  

Before sending out a cease and desist letter, a short investigation  (like the investigations that Not Just Patents® Legal Services does before they send out cease and desist letters) is a good idea. An investigation might show that the business that you were about to send a cease and desist letter to may have actually started using the trademark or trade name (business name) before you or has acquired valid rights in some other way. Sending them a cease and desist letter could be like striking a hornet’s nest and standing still with the stick in your hand.

ONE REASON TO BE CAREFUL WITH CEASE AND DESIST LETTERS: In a recent TTAB case,  MILLER v. MILLER, 91184841 (TTAB 1-7-2013), the plaintiff (who used the mark since 1998) used the fact that they received a cease and desist letter from the applicant (who used the mark since 2007) as one of their standing claims. Even though a likelihood of confusion would be the cause for the cease and desist letter, it was not pled as a claim but instead the opposition was sustained because of a type of merely descriptive claim, a surname claim.

Not Just Patents can  draft and provide you with a cease and desist letter to help you to enforce your trademark, trade name, trade dress, domain name rights, or patent rights. We can help you to oppose or cancel registering or registered trademarks that infringe on your prior rights or harm your business based on some other grounds for opposition or cancellation. We also help businesses answer cease and desist letters to help to avoid litigation where a use may be noninfringing or in good faith. Many attorneys make their living from litigation and may look for ways to turn situations that may be noninfringing or in good faith and turn them into lots of billable hours. We have seen cease and desist letters from large law firms representing large companies that do not do any research on facts before they send out cease and desist letters trying to scare businesses into giving up their legal rights. We may be able to help you if you are in this situation.


We also see cease and desist letters from businesses that are completely founded in fact because many new businesses do not even try to avoid conflicts. Many businesses launch using trade names, trademarks, brand names, etc. that have not been properly verified for noninfringing use. We may be able to help you too if you are in this situation but we would advise new businesses to seek help staying clear of infringing from the beginning. Starting over with a new business name, trademark, or domain name can result in significant loss of business especially if that DO OVER must happen quickly in order to avoid intentional infringement. We would advise businesses to plan for success. A Strong Trademark, Strong Domain Name, Strong Trade Name or Broad Patent is a more valuable piece of intellectual property.


What’s the Difference Between a Trade-Mark and a Trade Name?

Trademark identifies goods or services and Trade Name identifies businesses, vocations or occupations

The terms "trade-mark" and "trade name" are defined in 15 U.S.C. § 1127:

"The term 'trade-mark' includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others."

"The terms 'trade name' and 'commercial name' include individual names and surnames, firm names and trade names used by manufacturers, industrialists, merchants, agriculturists, and others to identify their businesses, vocations, or occupations; . . ."


Trademark and Trade Name rights are not the same

[T]rade names symbolize reputation of business as whole, whereas trademarks and service marks are designed to identify and distinguish company's goods and services; as with right to trade name, right to control use of trademark depends on priority of use. Stephen W. Boney Inc. v. Boney Services Inc., 44 USPQ2d 1225 (9th Cir. 1997).


What is the Purpose of a Cease and Desist Letter?

The purpose of a cease and desist letter is to inform the recipients of allegations of infringement, to give them a chance to discontinue the infringing activity, and to protect the sender's legitimate legal rights. FUTURISTIC FENCES, INC. v. ILLUSION FENCE, CORP., 558 F. Supp.2d 1270 (S.D.Fla. 2008). The purpose of a "cease and desist" letter is to obtain an out-of-court solution. PIANO WELLNESS v. WILLIAMS (D.N.J. 12-21-2011).


How Should A Cease and Desist Letter Be Sent?

As a general rule, Not Just Patents® uses email as a supplement but not as a primary way to send a cease and desist letter. There are several reasons that deal with verification and professionalism. Regular First Class mail or Certified Mail with a signature required is a favored way that we use to send cease and desist letters. Undeliverable mail can be used as evidence of attempts to provide notice whereas email can be filtered without the sender’s knowledge. There is a legal presumption that postal employees discharge their duties in a proper manner and that properly addressed, stamped and deposited mail is presumed to reach the addressee in due course and without unusual delay, unless evidence to the contrary is proven. Legille v. Tegtmeyer, 382 F.Supp. 166 (D.D.C. 1974).

Finding out that someone is no longer at an address can be valuable information so even undelivered mail serves a purpose. If it takes multiple letters just to reach someone (which is often true with new or small businesses) but they claim in a legal document somewhere that the addresses are legal and valid, you may have reason to believe otherwise.


But professionalism is a another issue. Sometimes people shoot off angry emails that they later regret or that do not meet a well-thought-out strategy of protecting goodwill in a business. A cease and desist letter as notice  of a pending lawsuit “must of be such nature as reasonably to convey the required information.” (See below)


How Long to Respond?

Timing is All About Notice: Due Process Requires Time

Giving someone ten (10) days to respond to a cease and desist letter may not be enough. The purpose of a cease and desist letter is to provide notice. Under the Anticybersquatting Consumer Protection Act (ACPA), courts have ruled that eight days is not enough and that 19 seems to be more in the right ballpark.

In Lucent Technologies, Inc. v. Lucentsucks. Com, 95 F. Supp. 2d 528 (2000), “An elementary and fundamental requirement of due process in any proceeding which is to be accorded finality is notice, reasonably calculated, under all the circumstances, to apprise interested parties of the pendency of the action and afford them an opportunity to present their objections.... The notice must of be such nature as reasonably to convey the required information, and it must afford a reasonable time for those interested to make their appearance.. . .”

“[P]otential parties to a court action share the same tendency as the rest of us to take vacations of two weeks or more without leaving a forwarding address, and that, when they make a permanent change of residence, mail forwarded by the United States Postal Service arrives more slowly than mail addressed directly to the new residence. . . .Due Process requirements contemplate the time reasonably necessary to digest the notice and to find an attorney.”


Trademark Rights and Enforcement

A Report to Congress titled Trademark Litigation Tactics  and  Federal Government Services to Protect Trademarks and Prevent Counterfeiting (pdf)  (html text searchable version) (April 2011) has recently looked at the issue of cease and desist letters (amongst other things) and evaluates whether trademark rights have been enforced beyond a reasonable scope. The Report discusses cease and desist letters and what they typically contain and how they are typically responded to. The following sections are extracted from this report:


Trademark Enforcement Steps-How to Begin

Trademark enforcement efforts usually begin with drafting and sending a demand letter, also known as a “cease-and-desist letter.”  The cease-and-desist letter serves to put the alleged violator on notice of the mark owner’s rights and the violator’s perceived rights violation.  The normal goal of such a letter is to obtain early resolution of the matter and spare both parties the time and expense of a civil litigation or inter partes proceeding before USPTO’s Trademark Trial and Appeal Board.  


Typical Format of a Cease and Desist Letter

The typical format of a cease-and-desist letter notifies the alleged infringer of the mark owner’s rights, explains why the mark owner believes confusion (or if appropriate, dilution) is occurring, or likely to occur if the alleged infringer continues use of its mark, and sets forth the mark owner’s demands that the alleged infringer take certain actions (e.g., ceasing use, abandoning applications, surrendering domain names, obliterating the mark from existing products, limiting use to a certain manner and scope, paying profits, and the like).  The letter also usually requests a response by a specified date or within a specific time frame.


Demands

The demands in the letter and the tone (threatening or conciliatory) may vary depending on the facts and circumstances presented.  If a violation is sufficiently problematic that the mark owner is prepared to litigate immediately, the letter may threaten such litigation if the violator fails to comply with the demands set forth in the letter.  The letter may even be accompanied by a courtesy copy of a complaint that has been or will be filed if the matter cannot be expeditiously resolved to the satisfaction of the mark owner.


How to Respond to a Trademark or Trade Name Cease and Desist Letter

Upon receiving a demand letter, the recipient may respond on its own or consult with trademark counsel.  Often, counsel will send a “hold” letter to buy time to investigate the merits of the mark owner’s claims, consult with the client, and prepare a response.   Responses to a cease-and-desist letter generally fall into three main categories:   

1)   The alleged violator agrees to comply with the mark owner’s demands and/or stops using the offending trademark.  If this occurs, the parties may memorialize this in writing with either a written response letter that resolves the matter, or if the matter is more complex, via a settlement agreement.  

2)   The alleged violator does not respond within the specified time frame.  At this point, the mark owner often will send a follow-up letter.  If no response is forthcoming, the mark owner will either decide to drop its effort and acquiesce in that party’s use, or the mark owner will continue to pursue the matter by filing a lawsuit (typically in a Federal district court).  If the owner’s concern relates solely to efforts to register a mark, the owner may opt to file a proceeding with USPTO’s TTAB to petition to cancel a registration or oppose an application, instead of filing a district court action.

3)  The alleged infringer denies the allegations of infringement and/or asserts various legal defenses justifying its ability to use its mark, files a declaratory judgment action, or offers a compromise solution for going forward.  If the response presents compelling facts or legal points that the mark owner may not have known or failed to consider, the owner may decide to pursue settlement or drop its claims altogether (e.g., if it turns out the alleged infringer can show that it has priority of use).  If the mark owner does not believe settlement is possible, the mark owner usually will continue to pursue the matter by filing a lawsuit or initiating a cancellation or opposition proceeding with USPTO’s TTAB.


Please call Not Just Patents for cease and desist letters or responses to cease and desist letters at

1-651-500-7590 or email us at info@notjustpatents.com.


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Steps to a Patent    How to Patent An Invention

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Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    Business Name Cease and Desist Letters

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal  Standard TTAB Protective Order

Patent Field of Search

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

Patent search-New invention

Merely Descriptive Trademarks   Merely Descriptive Refusals

Patent Search-Non-Obvious

Register a Trademark-Step by Step   Trademark Fixer

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Shop Rights

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Patent Pending see also Patent Marking

Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

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Trademark Searching Using TESS  Trademark Search Tips

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What is a Small or Micro Entity?

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Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

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How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

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Samples of Responses to Office Actions

ID of Goods and Services see also Headings (list) of International Trademark Classes

Broad Patents

Geographically Descriptive or Deceptive

Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

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What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose

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