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. 10 min read
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 catchphrases
- 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. In certain cases, described below, it may be best to delay the cease and desist letter until after litigation is filed.
Many trademark owners send these letters when they see a mark similar to their own published in the Official Gazette of the USPTO. This publication features trademarks that were just registered. Trademark owners can challenge these new marks within 30 days of publication.
Addressing a Cease and Desist Letter
When writing a cease and desist letter, you must consider the audience. Many individuals and businesses can be involved in an infringement case, including but not limited to:
- The owner of the infringing mark
- Shareholders, directors, and employees of that company or individual
- Parent and subsidiary companies
- Franchise owners and licensees
- Retail outlets and distributors
The cease and desist letter must be sent to all parties who may be using the infringing mark. However, you should carefully choose the person or entity to whom letter will be addressed. Consider the following:
- Where the entities in question are located
- How much stake each has in the use of the mark
- Who is responsible for use of the mark
- Whether pressure on a retailer or distributor could halt the use of the mark
If you can determine whether the infringer has an attorney of record, you can copy that person on the letter as well. When sending the letter to businesses, determine who the responsible parties are and address the correspondence directly to those who have authority to ensure it will be taken seriously.
With the WHOIS database, you can search all registered domain names to find information about the owners. This can help you determine who is responsible for an infringing mark. You can send the letter via both postal mail and e-mail wherever possible. Keep in mind, however, that an e-mail is not considered valid process service if you are also filing a claim.
Content and Tone of a Cease and Desist Letter
It's important to consider the tone and content when writing a cease and desist letter. Elements of a cease and desist letter should include:
- Identification of the party in question and the relevant marks
- Notification of your registration of the mark if applicable
- Identification of the infringing use in question
- Factors that may lead to marketplace confusion, including but not limited to:
- The strength of your mark, including how long you've been using it, when it was first used, how it is used in advertising, your position in the market, and other proof of public recognition
- The similarity of the products and services of the two companies
- The similarity of the marks
- Evidence of confusion, such as customer correspondence
- The use of overlapping marketing channels
- Evidence of bad faith
- Notice of actions that have been taken thus far
- Requests or demands
- Time period for receiving a response
- Consequences of failure to respond or act
- Statement of rights reserved
- Associated exhibits, such as advertising or packaging images, registration documents, and court documents
The tone of the letter depends on a range of factors such as:
- Likelihood of a negative response on traditional or social media
- The length and severity of the alleged infringement
- The existing or potential business relationship between the parties in question
- The objective of the letter
Conducting Due Diligence for a Cease and Desist Letter
Whether writing a cease and desist letter yourself or having an attorney draft one on your behalf, you must consider the tone and content of the letter carefully. While a stern demand with a deadline for the third party to cease using the mark can be effective, a polite letter can also lead to a favorable resolution of the infringement issue.
You will want to consider all the facts before writing the letter. This should include but is not limited to:
- The identity of the infringing mark's owner, which could be an individual or corporation
- The identity of the owner's shareholders, directors, employees, corporate parents, successors, subsidiaries, retailers, distributors, licensees, and/or franchisees
- Other parties that may be responsible for contributory infringement
- Valid addresses for the alleged infringers
- Whether the company in question is still in business
- Whether the infringement is likely intentional and whether it could create confusion in the marketplace
- The strength of the third party's potential defenses against infringement
- The risk of a declaratory judgment action, which is filed in the third party's choice of venue and forces your hand when it comes to suing for infringement
- Potential alternatives to a cease and desist letter, such as: taking no action, monitoring the ongoing use of the infringing trademark to track evidence of market confusion, or offsetting the perceived loss with discounts, increased advertising, or other business-driving measures.
In the reality of the business world, you must also consider your relationship to the owner of the infringing trademark. If the company in question is a major supplier to a client of yours, pursuing legal action via a cease and desist letter may not be in your best interest. Weigh ramifications for your company carefully before moving forward.
What Is a Declaratory Judgment?
A declaratory judgment occurs when a controversy exists about the rightful owner of the mark. Sending a cease and desist letter allows the recipient of the letter to request a declaratory judgment in his or her chosen court, which may not be the most advantageous venue for your case.
Think about the following if you're concerned about receiving a declaratory judgment action in response to a cease and desist letter:
- Are you prepared to defend your trademark in the court of another jurisdiction?
- Does the owner of the infringing trademark have a reason to litigate, such as a large investment in the trademark in question?
- Has the owner filed declaratory judgments associated with trademarks in the past?
Two common strategies are used to protect against a declaratory judgment. Consider sending a letter that expresses your concern about the similar marks without an infringement accusation. Conversely, if you have decided to sue for infringement you can file before sending the cease and desist letter.
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.
- Send the Letter
- You can use domain name registrations, corporate registrations, and websites to find valid addresses for the owner of the infringing mark. If you aren't sure of the address, send the letter to as many potential locations as you can find.
Establishing Priority of Use
Priority of use means that the person who first used the mark in question is its rightful owner. You will need to have evidence documenting that you were the first to use the mark. For registered trademarks, the registration date is considered the date of first use; however, an earlier date can be established if evidence exists.
The Internet Archive's Wayback Machine can be helpful in establishing priority of use. The latter resource is an archive of web pages dating back to 1996 and can show how your company or another company has used a trademark over time.
If your business is not strictly local, it may be important to establish priority of use outside the U.S. as well.
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 problem for your business.
Dealing With Severe Trademark Infringement
When the extent of the infringement and the harm suffered, as a result, is substantial you may want to consider the following measures rather than sending a cease and desist letter.
- Initiating Legal Action Against the Infringer Without Notice by Filing a Legal Complaint: This is a strategic route to take when you are concerned about a declaratory judgment. You have 90 days from filing the legal complaint to serve the complaint, so you can also file before sending the cease and desist letter to preserve your right to do so. This may also encourage the third party to negotiate, rather than proceeding with litigation, particularly if media attention is involved.
- Stopping the Infringing Action Immediately with a Motion for a Temporary Restraining Order (TRO): This is used when immediate and irreparable harm will result from the other party's use of the trademark. For example, you may want to file a TRO if a big industry event is approaching and both your company and the infringing party will be in attendance.
- Discussing a Mutually Beneficial Resolution: This can prevent costly litigation, when discussed with the party's leader.
- Pursuing a Licensee Relationship: This can potentially create a new income stream, instead of shutting down the infringing party altogether
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, Menlo Ventures, and Airbnb.