Cease and Desist Letters: Standing Against Trademark Infringers

By: Heather Bowen

A trademark protects a word, phrase, symbol, slogan, and/or device that identifies and distinguishes the source of the goods or services of one owner from the goods or services of others in the same industry. Trademarks are federally registered with the United States Patent and Trademark Office (USPTO) and are governed by the Lanham Act, 15 U.S.C. §§ 1051 et seq. Federal registration with the USPTO gives a trademark owner exclusive ownership of its trademark and the right to use the mark in commerce. Even where a trademark owner has not federally registered its mark or if the trademark registration has expired, a trademark owner may have common law rights in the trademark in the geographic area in which the mark is being used.

A trademark owner is responsible for defending and enforcing its  trademark rights. Once a trademark owner becomes aware that a third party is infringing its trademark, the first step frequently is to send the infringing party a cease and desist letter as opposed to immediately resorting to filing a legal complaint, seeking a declaratory judgment, or filing a temporary restraining order. A cease and desist letter is important. It is drafted by the trademark owner or the trademark owner’s legal counsel and demands that the infringing party stop infringing the mark at issue. The tone of a cease and desist letter can vary from severe, such that the letter strongly encourages the infringing party to cease the infringing activity or face a potential lawsuit, to a softer letter requesting that the infringing party cease its infringing activity.

The cease and desist letter should, at a minimum, include the following key provisions:

• The name of the trademark owner
• The trademark and its registration number
• A description of the trademark owner’s rights
• A description of the infringer’s activity on the trademark
• Any evidence demonstrating a similarity of the marks or nature of the goods and/or services
• A request or demand for the infringing party to cease the activity within a defined period of time
• Next steps that will be taken should the infringing activity continue (e.g. Legal action and fees)

A cease and desist letter can be sent by the trademark owner to the infringing party at any time once the trademark owner has become aware of the infringing activity.  However, the trademark owner should not delay in sending the cease and desist letter for an unreasonable period of time. Acting quickly demonstrates that the trademark owner is taking steps to enforce its rights and helps the trademark owner build a case against the infringing party should the issue need to be resolved through the legal process. However, when a cease and desist letter is sent, the trademark owner needs to understand that the recipient might file a declaratory judgment action in a forum it selects and ask the court to exercise declaratory judgment jurisdiction over the case and enter a judgment that the recipient is not infringing the mark at issue.  Where the risk of a declaratory judgment action seems high, the trademark owner might wish to file the complaint first before sending the demand letter so as to ensure a favorable forum in the event the matter cannot be resolved without litigation.

When appropriate, a trademark owner can seek a mutually beneficial resolution to prevent a costly legal battle by licensing the infringing party.  By entering into a license agreement, the trademark owner can license the infringer, exercise control over the quality of the goods and services, and receive a royalty on sales of those goods and services.

Whether sending a cease and desist letter to enforce trademark rights or seeking to enter into a license agreement with a third party, any trademark owner should seek competent legal advice.