The Law Office of Diane M. Chubb, Esq.Intellectual Property Law For Your 21st Century Business
Cease and Desist Letters
It’s not uncommon for a business to receive a letter from a third party claiming that it has infringed their trademark rights. This party is sending the letter to demand payment for damages and attorneys’ fees. This leads to a dispute – who really is the owner of the trademark rights in question and is there infringement?
What’s really going on?
When a business uses a name or mark that is similar to that of another business, there is the opportunity for potential confusion. Are the businesses related? Are the actions of one company attributable to another?
If Business A provides a bad product or service, Business B certainly doesn’t want that reputation to harm its business. Further, Business B doesn’t want to be held liable for the actions of Business A either.
When the names or marks create this confusion, the claim is trademark infringement. The use of the confusing mark or name infringes on the rights of another.
A cease and desist letter is a way for one business to put the other on notice that it believes there is trademark infringement. The business will demand the other cease any and all use of the name or mark, and may require the payment of damages.
What happens next?
The key factor in a trademark dispute is determining priority:
- Has either party filed a trademark application?
- Who has the first use of the mark?
- What is the mark being used for?
- Where is the mark being used?
These factors will determine who has “priority”, or the superior right to use the mark.
it is possible that the party being asked to cease and desist has the superior rights in a matter.
The next question is whether the marks confusing similar? How alike are the marks in sound, appearance and meaning. For example, the mark COOL DIGS for beachwear is likely confusingly similar to KUUL DIGS for clothing, given the similar sound and the related goods.
Parties will disagree as to whether the marks are confusingly similar, and will offer evidence to support their position. Unless a settlement can be reached, the matter may end up before a court or other judicial body.
In any trademark dispute, it’s critical to involve attorneys experienced in this area of the law. After spending time and resources to build a brand, no business wants to give up the rights to use its name and mark.
We have over 21 years of experience in analyzing and resolving trademark disputes.
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*Note: The material provided in this notice is for informational purposes only and not for the purpose of providing legal advice. Use of this material does not create an attorney-client relationship. Please contact an attorney to obtain advice with respect to any particular issue or problem.