Cease and Desist Letter? Here's What to Do!

I Received a Letter/Email. . . What is a cease and desist letter/email? A cease and desist (or demand) letter/email is correspondence that suggests that you are potentially infringing the trademark/copyright of another and demands that you stop using the accused mark. You should treat any such letter/email seriously. What are my options?

1. Respond -If you have a basis for doing so, you may respond to the letter and deny infringement -You may respond by requesting more specific evidence as to why the trademark owner believes you are infringing its mark: dates of first use, proof of registration, and geographic areas where the mark has been used.

2. Do Nothing -You may elect not to respond. Some cease and desist letters are sent in the hope that some recipients will be misled or intimidated into stopping or paying for use even though they do not need to do so. Best to consult an attorney.

3. Negotiate -You may negotiate with the trademark owner for a license to use the mark on mutually agreeable terms, or to obtain an agreement that you do not infringe the trademark.

4. File Your Own Lawsuit -You may want to explore suing the trademark owner for a declaratory judgment; stating that your mark does not infringe the trademark. An attorney experienced in trademark disputes can help you decide among these and other options and how to implement them.

Does receiving a letter from the trademark owner mean that I’m being sued or will be sued? Receiving a letter, without more, does not mean that you have been sued. Generally, if a federal lawsuit is filed against you, the trademark owner must serve two documents on you:

(1) a complaint, and

(2) a summons.

What if the trademark is not federally registered, or the registration expired or was cancelled? Federal registration is not required to establish trademark rights. Even if a trademark registration expires or is cancelled, the trademark owner may continue to have "common law; rights in the mark. Common law rights arise from actual use of a mark for particular goods or services and may allow the common law user to successfully challenge another party use in court. Do I need an attorney?

While you are not required to have an attorney to respond to a cease and desist letter, an attorney can help you understand the scope of your trademarks rights and the strengths and weaknesses of the allegations against you. Though the advice and representation by an attorney can be expensive, the assistance of an attorney can be very valuable.

An attorney may help you navigate the negotiation with your accuser and ultimately save you from additional costly legal problems. Because there are several ways to respond to a cease and desist letter/email, and these options may each have significant legal ramifications, we recommend that you consult an attorney experienced in trademark disputes.