Receiving a trademark cease and desist letter can be alarming, but it’s essential to handle it carefully to protect your business and legal interests. Trademark law can be complex, and responding incorrectly could expose you to lawsuits. An attorney can:
- Assess the strength of the claim.
- Draft a response letter (denying, negotiating, or rejecting the claims).
- Defend your rights if the matter escalates.
Here’s the process we follow when we assist business owners with a response to a cease and desist letter.
- We Review the Letter Carefully
A cease and desist letter is not an automatic lawsuit; it is simply a warning from a trademark owner that they believe you are infringing on their rights. These letters often assert rights the sender doesn’t actually have. We read the letter thoroughly to understand the alleged infringement and demands being made such as stopping usage, transferring a domain name, or paying damages.
- We Verify the Trademark and Claims
Before taking action, we research whether the sender actually owns the trademark, if the trademark is still in force and what products and services it covers. Sometimes the rights being asserted are not actually valid!
- Evaluate Your Rights
You may have legal grounds to continue using your mark if:
- You used the trademark before they registered it (prior use rights).
- Your business operates in a different geographical region or industry
- Your use might qualify as “fair use” or be non-infringing.
- Your use is descriptive rather than brand-specific
- Evaluate Your Response Options
After assessing the claim, we provide options so you can decide how to proceed. Some options might be:
- Comply with the demand if the claim is strong and changing the name won’t hurt your business.
- Negotiate if you believe a compromise (such as modifying your branding) is possible.
- Challenge the claim if you believe their trademark is weak, generic, or not applicable.
Receiving a cease and desist letter doesn’t automatically mean you’re in the wrong. By carefully reviewing the claims, seeking legal guidance, and responding strategically, you can protect your brand while minimizing legal risks. Give me a call if you receive a cease and desist letter and we can help you decide how to respond. Having an attorney involved also ensures you are prepared to escalate the matter if that becomes necessary.
Tracy Jong is a Senior attorney at Evans Fox LLP with 30 years of experience focusing her practice in business law, intellectual property and licensing for alcohol and cannabis. Tracy Jong is a member of the New York Bar and is a registered attorney at the United States Patent and Trademark Office. She can be reached at [email protected].
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The content has been prepared for informational purposes only; it should not be construed as legal advice, does not create or constitute an attorney-client relationship, and readers should not act upon it without seeking professional counsel.