Trademark Cease and Desist: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A TrademarkTrademark Infringement
A trademark cease and desist letter asks a third party to stop using a trademark in commerce. Failure to do so can lead to a lawsuit, legal action, and fees. 5 min read
Trademark Cease and Desist: What Is It?
A trademark cease and desist letter asks a third party to stop using a trademark in commerce. Failure to do so can lead to a lawsuit, legal action, and fees. Whether you send or receive a cease and desist letter, consult an attorney to determine the right course of action for your situation.
Why Is Trademark Cease and Desist Important?
Trademarks protect any of the following that's directly related to a company and its products or services:
- Unique business names
- Slogans or catch phrases
- Domain names
- Other intellectual property
Since trademarks are used in commerce, they are important for protecting your business and its livelihood.
The United States Patent and Trademark Office (USPTO) registers federal trademarks for interstate commerce. The Lanham Act, also known as the Trademark Act, governs trademarks.
A trademark gives the owner exclusive rights to use the mark for profit. These rights aren't applied on their own, though. The trademark owner must watch out for trademark infringement. If you see infringement, you must defend the mark.
A cease and desist letter is typically the first step toward stopping infringement. Sending a cease and desist letter helps the trademark owner do the following:
- Preserve rights
- Avoid expensive legal action
- Set a precedent for future enforcement
How to Write a Trademark Cease and Desist Letter
- Identify an Infringement: This happens when someone sells or advertises goods or services with a mark that is the same or similar to your trademark.
- Research the Use: Learn more about the infringement and the company or individual behind it. Understand whether you really have the rights to the trademark or if the accused infringer's rights supersede yours. Try to determine whether it's accidental or on purpose. This can help you build a case and respond appropriately.
- Talk With an Attorney: While you can write a cease and desist letter yourself, it's in your best interest to work with an attorney. Casually written letters that lack substance won't have an effect. Effective cease and desist letters need:
- Legal claims
- Clear demands
Trademark owners can send cease and desist letters at any time. It's always in their best interest to start the process right when they notice infringement. Doing this helps trademark owners enforce their rights. It helps them build a case around their ownership.
Many trademark owners send these letters when they see a mark similar to their own published in the Official Gazette of the USPTO. This is a publication that features trademarks that were just registered. Trademark owners can challenge these new marks within 30 days of publication.
How to Respond to a Trademark Cease and Desist Letter
- Read It
- First, read the cease and desist letter carefully.
- Find out whether the sender is a large corporation or a low-profile individual. Big companies are more likely to enforce trademark rights and pursue legal action.
- Review It
- Determine whether the complaint outlined in the letter is legitimate. Many letters have no real substance. Instead, they only emphasize how big and powerful the trademark owner is.
- Research the claims that are in the letter.
- Research It
- Search for the trademark in question in the USPTO's Trademark Electronic Search System (TESS) database.
- From there, you can determine whether your actions infringed on the trademark.
- Talk With an Attorney
- Contact an attorney who specializes in intellectual property. If the complaint lacks credibility, you may be able to proceed without responding.
- If the trademark owner insists on pursuing legal action, you'll want to have proof that you took the letter seriously. Many trademark infringement cases don't go to court. You may be able to seek a declaratory judgment. You'll still need an attorney's assistance to settle your case.
Outcomes of Trademark Cease and Desist Letters
- No Response: In some cases, the infringer never responds to the letter. The trademark owner can send another letter in due time. They can also monitor the infringer for future issues.
- Immediate Cease and Desist: The infringer may agree to comply with the request right away. The trademark owner should document the events. They should also monitor the infringer for future issues.
- Negotiation: The infringer may request licensing rights to continue to use the trademark. This usually requires a legal agreement and a licensing fee.
- Litigation: The infringer may deny the cease and desist request under the pretense of "priority of use." In this case, the trademark owner may need to take legal action to enforce exclusive rights. This typically involves filing a Notice of Opposition or Petition for Cancelation. A lawsuit that seeks an injunction, damages, and attorneys' fees may also be necessary.
- Not Registering Your Trademark: You can register a trademark in your state. However, if you do business across state lines, you should apply for federal trademark protection. This gives you nationwide rights to use the mark. It also informs the public of your ownership. You may be able to argue the right to use your mark even if you haven't registered it yet. In addition, if you use the mark in commerce, you may gain some common-law rights. However, your case won't be as strong without federal trademark protection.
- Not Doing Due Diligence Before Registering a Trademark: You can avoid many cease and desist cases by doing extensive research before you fill out a trademark application. This is known as due diligence. When you submit a trademark application, USPTO Trademark Examining Attorneys search the TESS database for similar marks. They might not find state trademarks or common law usage, though.
- Waiting Too Long to File a Cease and Desist Letter: There's no set deadline for sending a cease and desist letter. However, trademark owners can't wait an unreasonably long time to enforce their rights. If the delay presents undue hardship for the infringer, the trademark owner's case might be less successful.
- Ignoring a Cease and Desist Letter: If you receive a cease and desist letter, don't ignore it. Failing to act quickly could lead to a lawsuit. It could be a serious problems for your business.
Frequently Asked Questions
- How Much Does a Cease and Desist Letter Cost?
You can write and send a cease and desist letter yourself at no cost. If you hire a lawyer to take care of it for you, expect to pay a legal fee of at least $500. Most lawyers charge an hourly rate for litigation and other legal matters. If you need to litigate, the costs could be very high. The American Intellectual Property Law Association reports that in 2015, the median cost to litigate a trademark infringement claim is about $325,000 when less than $1 million is at risk.
- Is a Cease and Desist Letter the Only Way to Enforce Trademark Rights?
Trademark owners can also contact potential infringers by phone or email. This can lead the way to a constructive dialogue about trademark rights.
- Are There Benefits to Not Sending Cease and Desist Letters?
Trademark owners who frequently identify potential infringers and send cease and desist letters become known as "trademark bullies." Before requesting a potential infringer to stop using your trademark, consult with an attorney to make sure you have a valid case.
If you need help with trademark cease and desist, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law. They average 14 years of legal experience. This includes work with or on behalf of companies like Google, Stripe, and Twilio.