Trademark Enforcement: Notices and Cease and Desist
So what can you do if you discover that someone is stealing your customers by using your brand names to sell product either on their own or through a 3rd website (a 3rd party website, we sometimes call it)? So, for example, if someone’s selling a product using the same brand name as you have but they’re doing it on, say, Amazon (Amazon is the 3rd party) Well, this is part of what we address in the 5th Step, Enforcement, of the E5 Trademark System. And specifically, what you’ll want to do is provide Notice to these infringers that they are using a mark that you have a registration on or perhaps that you have a State Registration or Common Law Rights to, but you want to put them on notice. You also especially want to put 3rd parties on notice. 3rd parties, they can be kind of difficult to recover damages and enforce injunctions against them. So, by putting them on notice early, you can establish that they are aware of the Trademark Registration. And if it comes down to a judge enforcing an order, then because they have Notice, it’s considerably more likely that you’ll be able to see that your mark is enforced against that 3rd party with Notice.
The next step after sending a Notice, and occasionally the 1st step is a Cease and Desist Letter. Now, the Cease and Desist Letter certainly goes to the company and business that’s actually using your registered mark. This is telling them to Cease (big word for stop) and Desist (the word for quit using, going forward) your Registered Trademark. Again, it could apply to some Common Law Rights as well; but typically, there’s going to be a registration behind it — Oh by the way, this is why you should register your mark now instead of waiting into the future because it’s much more difficult to enforce a registered, pardon me, it’s much more difficult to enforce a mark if it’s not registered in a court system.
So, when the Cease and Desist Letter goes out, you’re telling them to stop and that the next step may be litigation, either directly or you’re implying it. Now, here’s a nuance that’s important: When you send out a Notice Letter, you typically are not threatening litigation, you’re just making them aware, and the reason for that is because you don’t want them to go running to court and seeking what’s called a Declatory Judgment, court declare that we’re not infringing this mark. And to run into a court with a Notice Letter will often get that case thrown out. However, a Cease and Desist Letter is much more specific. It is going to allege specific infringement and sometimes even cite specific acts of infringement and actual confusions, and it will be crystal clear that the next step is probably going to be litigation.
So, when you send the Cease and Desist Letter, you have to do so with a realization that the opponent may rush to the courthouse and actually follow a Declaratory Judgment Action first.
So, what do you do if you think your opponent is litigious? Well, the answer that many attorneys will give you is that you should go ahead and file a lawsuit without actually serving process of the lawsuit, so it’s not actually effective yet to prevent someone else from forcing you to litigate an infringement case in their state or city far away from you.
So, using Notices and Cease and Desist Letters wisely is an important part of enforcing your rights. And in fact, at my practice, we have a system that we can set up that automates Notice Letters and Cease and Desist Letters because they are full of additional information almost always are unique to the recipient.
However, a Notice Letter can be made broader and more standardized so that it can be used more automatically.
Again, you have to address it to the right people and make sure that the right people get the Notice, but that’s part of this enforcement process. So, if you know of someone who’s using your mark without your consent, they’re stealing your customers, and if they’re doing it through a 3rd party, be in touch and we will assist you with managing that issue and helping ensure that your customers are not stolen from you.
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