What to Do if You Receive a Cease and Desist Letter Alleging Trademark Infringement

As a business owner, there's an undeniable thrill and sense of achievement when you see your new venture start to gain momentum. You've got everything in place – the location, all the required licenses, and a great team. And, after careful consideration, you chose a trademark and registered it with the US Trademark and Copyright Office (USPTO). Now, you're proudly displaying this trademark on everything associated with your business – from product packaging to your website to business cards, marketing materials, and even letterheads. Things are really starting to take off.

But then, out of the blue, you get an email that stops you in your tracks. It’s a cease and desist letter claiming that you're infringing on someone else's trademark rights.

What a gut punch, right? Just when everything was going smoothly, this lands in your lap. You're probably feeling a mix of anger, worry, and confusion. But don’t lose hope. With the right approach, you can handle this situation effectively. Let's talk about what you should do if you find yourself facing a cease and desist letter for alleged trademark infringement.

Is It Legitimate?

Your first move should be to figure out if this cease and desist letter is legit. Remember, we're in an age where digital scams are all too common. Start by looking at the email address it came from. Does it link back to a legitimate law firm or a rights management company? Then, consider the tone of the letter. Is it specifically addressed to you? Does it mention your name, your business, or one of your products directly?

Next, dive into the details of the letter. It's important to verify the facts. Check if it includes concrete information about the company claiming you're infringing on their rights (the “complainant”). This should include things like their trademark registration number and full contact details for whoever is representing them, be it an individual or an attorney.

Verify the Allegations

Once you're sure the letter is authentic, the next step is to dig into the infringement claims themselves. Take a close look at the trademark the complainant is talking about and compare it with yours. A handy way to do this is using the United States Patent and Trademark Office’s Search System. Check if the complainant really has the trademark registered, just like they claim in the letter.

If you find that their claim holds water, it's time to bring in the professionals. Reach out to an intellectual property attorney who’s seen this kind of situation before. An experienced lawyer can help you understand your situation better and guide you on the best way to handle it.

What if It’s a Scam?

Let's say you figure out that the cease and desist letter doesn't add up and seems like a scam. Conventional wisdom says you should probably ignore it at first. This advice even applies if the letter seems pretty generic – sometimes, rights management companies send these types of letters just to see if you'll bite.

Once you've ignored that first message, there's a chance you might get a follow-up. That's the point where it’s a good idea to talk things over with your attorney. They can help you figure out your next steps. On the other hand, the whole thing might just fizzle out and end up being nothing to worry about.

When It Is Legitimate

If it turns out the cease and desist letter has a valid point about trademark infringement, maybe because your trademark is too similar or even identical to the complainant’s, you’ve got a few options. Sure, the straightforward route is to just stop using your trademark, but there are other, less drastic steps you can take.

For instance, you might be able to work out a deal with the complainant. This could involve adding clear disclaimers when you use your trademark, tweaking your trademark a bit, or even hammering out a co-existence agreement. In these scenarios, it's really smart to have an experienced intellectual property attorney on your side. They can help negotiate a deal that works for you and keeps things from escalating.

If you don’t reach an agreement, there's a chance the complainant could take legal action, potentially suing you in state or federal court to make you stop using your trademark. So, it's important to handle this situation carefully.

Conclusion

Even though a cease and desist letter might sound pretty intense, often full of urgent and serious language, it doesn't always mean trouble is inevitable. There are plenty of ways to resolve these situations amicably. This is where an experienced intellectual property attorney comes in handy. They can guide you through the best ways to respond to the letter, aiming to keep any impact on your business as minimal as possible.

Are you wondering about any of the issues mentioned above? Please email us at info@wilkinsonlawllc.com or call (732) 410-7595 for assistance.

At Wilkinson Law, we give business owners the documents and advice they desperately need to fund, grow, protect and sell their businesses. We are trustworthy business advisors keeping your business on TRACK: Trustworthy. Reliable. Available. Caring. Knowledgeable. ®