You’ve received a cease and desist letter stating you violated someone else’s trademark, and it’s asking for you to stop using your business name.
This is a scary proposition, since your business may be new and you may have already purchased many items pertaining to your business name, including business letterhead, business cards, uniforms, and equipment.
Maybe you have been operating under your business name for some time and it would be nearly impossible to change things now. So, do you respond to a cease and desist letter alleging trademark or other intellectual property (IP) infringement?
Before taking decisive action, carefully read the letter or e-mail at issue. In doing so, consider whether you see any of these flags that may indicate whether the communication is legitimate:
Just because a communication includes any of the points referenced above does not close the matter, but you can begin to get an idea of whether you have a legitimate complaint on your hands during your initial read-through.
If you believe that the communication you’ve received may be legitimate, check out the substance of the allegations. Compare the opposing party’s content to your own, if you can, and determine whether there may have been deliberate or inadvertent use of another party’s property without permission.
For example, if the communication references a copyrighted image, see whether you can locate the image on your site. If you can, check to see where the image came from, and whether you have secured the right to use it. If the communication references a trademark, do a quick search of the United States Patent and Trademark Office’s Trademark Electronic Search System (TESS) to see whether the opposing party has actually registered the mark at issue.
If the opposing party’s information has been included in the communication, check the public databases made available by each state to determine whether you can verify the owner’s corporate existence.
If you see an overlap between the allegations made in your cease and desist communication and the information available from your own and third-party systems, it is more likely you are dealing with a legitimate demand.
If not, and you can’t independently verify any of the information in the communication you’ve received, there is a greater likelihood that you are the subject of a scam or shakedown.
At this point, if you believe that the communication you’ve received may raise legal action, forward it to your business attorney.
Attorneys – particularly those who regularly advise on corporate and intellectual property rights – have often seen dozens, if not hundreds of cease-and-desist communications and will be in a good position to advise you regarding potential next steps.
Sometimes, intellectual property attorneys may be able to give you an on-the-spot answer, either because they are familiar with the sender (either as legitimate or illegitimate) or because the verbiage of the communication clearly indicates either that there are issues.
If you ultimately decide that the sender of a cease-and-desist communication may not be legitimate or has raised allegations that aren’t likely to stick, conventional wisdom holds that you simply ignore the first communication.
This is true not only when you receive an e-mail that is clearly part of a scam, but also when you receive an e-mail that is generic and may just be seeking to determine whether a given target will engage (a strategy sometimes used by rights management companies).
If you don’t receive further follow up, it usually means that the issue will go by the wayside, and you can safely put the matter out of your mind.
If you do receive further communication, though, it is best to consult with your lawyer again to see whether a response is warranted.
In some situations, it is clear from the outset that the sender has a legitimate intellectual property dispute that you will need to address. Here are a few common scenarios and how you might go about addressing them:
You receive an e-mail from the trademark owner of a federally registered trademark alleging that your mark is the same as, or confusingly similar to, theirs (you can read more about trademarks).
In some cases, you may need to pivot away from the mark you are using, but there are often work-around options, too, such as disclaimers, co-use agreements, minor redesigns, and other forms of private settlement.
Just because two marks are similar or even identical doesn’t necessarily mean that the non-registered user must cease use of its mark.
Be sure to seek professional advice from an intellectual property lawyer before making any commitments.
You receive an e-mail from the owner of copyrighted images alleging that you have used their property on your site without permission.
While it may be an intellectual property violation if you’ve deliberately lifted and used an image without the proper clearances, you may be able to defend yourself by reference to the doctrines of fair use or first sale, or by showing that you have complied with the Digital Millennium Copyright Act (DMCA) protocols.
Here, too, don’t just agree to pay a monetary award to “make the problem go away” without consulting with an experienced intellectual property lawyer first.
While there are separate laws that deal with cybersquatting, the analysis associated with a cybersquatting claim is often similar to the analysis of a trademark infringement claim.
If you are legitimately using a domain name that you purchased without the intent of harming another party, it may be difficult to substantiate an intellectual property violation against you.
Here, too, check with your IP attorney first before surrendering any given domain names.
While less common, you may draw an accusation that information on your website defames or mischaracterizes another party. Claims like these are more difficult to prove than most people imagine – particularly if the statement at issue was made by a third party, like in a comment or review.
While some companies regularly cave to demands like these, it may affect your ability to be impartial and build useful content, so it is a good idea to consult with a business and intellectual property lawyer before pulling down the content at issue.
Unlike some firms, The Lipp Law Firm responds to cease and desist letters regularly and can quickly and efficiently assist you with whether a response to the letter is needed, at a reasonable fee.
Each demand letter requires its own consideration. Some can go into the recycling bin without a second thought. Others, however – particularly those that come from lawyers – may require more attention.
Even when you disagree with the allegations in a cease and desist letter, ignoring one from a legitimate source may lead to bigger problems, or even legal action. So, the best thing to do when you receive a communication that may carry weight is to check with an experienced intellectual property attorney to decide on the correct course of action.
Even if that step is to stand silent in the short term, you’ll know that you are fully informed about the risks and benefits in play, and you can have peace of mind and strong legal protection.
Lipp Law provides fast and reliable legal advice to its clients. We do not work off billable-hour requirements, so our lawyers aren’t overburdened or trying to bill a client unnecessary hours.
Contact Lipp Law today to assist with your cease and desist letter response.
Ryen Rasmus is an Attorney with The Lipp Law Firm, PC and specializes in corporate transactions and intellectual property. You can contact Ryen at Ryen@LippLawFirm.com.
Are you a business owner or executive in the DMV area (DC, Maryland, Virginia)?
Or maybe you just want to hear our Lipp Law updates (thanks for your support! 🙏)?
If so, you should check out Lipp Law's Employment Law Newsletter. Expect regular updates about employment law and the team here at Lipp Law, focused on serving you - the backbone of our DMV business community.
If you like to keep your business compliant with employment law changes, subscribe below!