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
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.
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
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 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.
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
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
Call: 1-651-500-7590 or email: firstname.lastname@example.org. This site is for informational
purposes only and is provided without warranties, express or implied, regarding the
information's accuracy, timeliness, or completeness and does not constitute legal
advice. No attorney/client relationship exists without a written contract between
Not Just Patents LLC and its client. Past performance is no guarantee of future results.
Call 1-651-500-7590 or email email@example.com or ContactTrademark.com for
Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent
or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.
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