The following is an edited transcript of Chapter 17 of my book video Building a Bold Brand: Enforcement vs. Others
An important tool to keep a brand strong and legally protected is to deal with infringement situations when they arise, whether you are the accuser or the alleged infringer. The great majority of infringement matters are resolved without litigation, and the great majority of trademark litigation cases that are filed are resolved without a verdict from a court.
Dealing with Someone Infringing your Brand
If you find a possible conflict with your brand, the first thing to do is to document it. Then, talk to an informed attorney. If the other business is using a confusingly similar name for a related service or product, then action may be warranted. Possible actions can range from a simple phone call or a friendly letter to a lawsuit, so consulting an attorney about the particular circumstances and appropriate strategies is recommended.
Often the first step to provide a warning and seek a resolution is to send a “cease and desist letter,” which generally notifies the other party of the infringement concerns and demands that the other party stop infringing the trademark. Before sending a cease and desist demand letter, one should consider:
- Is this a real infringement concern?
- What are my options if the letter is ignored?
- What will happen if the letter is made public?
- Could there be a “Streisand Effect,” where calling attention to a situation actually leads to more exposure and harm than good? (See https://www.erikpelton.com/the-streisand-effect-warning/)
- Is a letter the most appropriate action (versus a phone call, filing suit, or some other action)?
- Should the letter be strong or gentle?
- Should the letter be sent via email, mail, certified mail, or overnight delivery? Is there counsel, a registered agent, or another address to whom the letter should be sent?
- Are you prepared if, upon receipt of the letter, the receiving party files suit in court for a declaratory judgment of non-infringement?
- Are you sure that the party to whom you are writing was not using the trademark first and cannot respond by asserting a claim against you?
Tip: When you discover an infringement, move quickly to deal with it. The more time, money, and emotion that the other business invests in building their brand, the more likely they are to put up a fight to protect it.
Receiving a Cease and Desist Letter
Brand owners who receive a cease and desist letter telling them to stop or limit use of an already trademarked name, product or service, slogan, or logo should not take it lightly. Failing to respond may make the matter more complex, risky, and expensive. Key considerations to address include:
- How similar are the names, products, services, or logos?
- Are your businesses related?
- Who used the name first?
- Is there a compromise that might be reached?
- If the two companies vary greatly in size, might one end up looking like a bully?
Many allegations of infringement are worth defending. But, sometimes, even if the legal defense is fairly strong, defending the case may not be the best business decision. In some instances, facing potential trademark infringement litigation may be a blessing in disguise, as it provides a chance to rebrand, recommit to the business, and restart the refreshed brand on a clean slate.
For more about cease and desist letters, visit our page here.
