So you have just received a trademark cease and desist letter. Like most trademark cease and desist letters, the person contacting you has probably given you one of two options: 1) stop using the name to identify your goods and/or services; or 2) be sued. If you are like most business owners neither of these choices is ideal. This is because you have spent a great deal of time and money getting your name out to the public and the thought of changing your name is difficult to accept. At the same time, in 2011 it was estimated the average cost to litigate a trademark infringement case through trial starts at $384,000 excluding any judgments and damages awarded. So what do you do?
Unfortunately, without knowing the circumstances of your case it is difficult to determine what options you have. For example, depending upon when you first started using the business name in commerce you may have certain rights to the trademark that are grounded in common law. Another important consideration is how similar is your business name to the other trademark in relation to the goods and/or services you both offer. Where it is an exact match, unless you can show common law trademark rights chances are you may be infringing on their trademark. What about the notoriety of the other mark? If the other mark constitutes a famous mark this will act as an absolute ban on your using the mark regardless of the dissimilar nature of the goods or services you are offering unless, of course, you can show common law trademark rights.
To know what options you have it is essential that you contact an attorney knowledgeable in trademark law. Receiving a cease and desist letter is a serious matter that should not be ignored, as intentional trademark infringement will subject you to the potential of increased damages. Even if you are willing to completely walk away from the business name, it is still recommended you seek advice from a trademark attorney. This is because you would hate to find yourself in the same predicament again and an attorney can help ensure that you choose the right (non-infringing) name for your business.
Published June 5, 2013 by Alex Spurr.