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The mail comes and you notice a letter from a law firm you do not recognize.  As you open the letter you hope for the best but you are nervous in anticipation of what the letter says.  You read the opening paragraph of the letter:

“We represent the ABC Company in the protection of their intellectual property rights.  It has recently come to our client’s attention that you are using the trademark…”

You continue reading your heart now racing.  A law firm is demanding that you immediately stop you or your company’s trademark, its brand, its very identity.

Anger, frustration, and denial set in.  Everything in the letter is wrong.  Your trademark is spelled differently from the other trademark.  Moreover your goods or services are not identical to those provided by the law firm’s client.  You quickly formulate your planned response before you even reach the end of the letter.

You decide to pick up the phone and call the lawyer who wrote the letter to explain to he or she how there is simply no infringement here.  Better yet, you’ll put it in writing and begin typing a responsive yet somewhat emotion-fueled email.

Does this sound familiar?

Before you do anything please stop, do not rush your response, take a few deep breaths, and make sure you understand a few basic principals about the situation you now find you or your company in before writing that email or making that call.  Quite simply, a little reasoned thought may make the difference between keeping and losing your trademark.

Trademark Law 101

First a primer on the basics.

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is your brand name.

Of note, federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the U.S. Patent and Trademark Office has the ultimate right to use and registration.

Priority of Use

With this basic understanding of trademarks in hand, one of the initial steps in evaluating any cease and desist letter is to determine who has priority of use (i.e., who used their mark first) of the respective trademarks.   This may be the most effective defense to an allegation of infringement insofar as if you can establish that you or your company actually used your trademark before the other’s first use of their mark it is the other party that may be infringing upon your rights and not the other way around.

Surprisingly law firms issuing cease and desist letters often fail to accurately establish the priority of use of their clients’ trademark before sending the letter.  Often this is understandable in that even with the Internet, available corporate databases, and other methods, determining when a business truly first began use of a trademark – especially where the business does not have a federal registration – is often a function of the law firm’s best guess as to priority of use based upon all available information it can gather.

In the alternative, the cease and desist letter you receive will, more likely than not, list the earliest date of priority of use the opposing side can claim for its trademark.  This key bit of information is usually phrased to the effect  “Our client has been continuing using their trademark since as early as ….”  In this regard, rather than conducting initial research on the use of the other party’s mark you are instantly presented with the date they will, most likely, rely upon for their priority date should the matter progress further (i.e., into litigation).

Note the legal wiggle room “since as early as” which is almost always the way dates of first use are referred to in cease and desist letters.  Through experience lawyers know to use this language so that if you respond with an earlier priority of use date they have not locked themselves into one date for their client but can fall back on amending that date since the original one listed in their letter was only “as early as” but the true date could be, in theory, a date they have yet to reveal.

With this in mind, you should evaluate whether you began use of your trademark prior to the opposing party’s first use of its mark.  In other words can you beat their date of first use?

Often the answer to this question is simple.  If you just opened your business and the other party has been using its mark for 70 years they more likely than not retain priority.   On the other hand, perhaps you have been using your mark in the New York tri-state area for 20 years but have never registered the trademark.  The other party sends you a cease and desist letter alleging a date of first use in 2008.  Who has priority?  You do, more likely than not.

But beware, the issue of priority is often a far more complex question.  Let’s say the other party has been using their mark for four years, has a federal registration for their trademark, and now wants you to cease using your mark.  You are a California-based business but have never taken the time to register your trademark.  You have also been using your trademark for four years in Southern California and  for almost that entire time the goods you offer have been and continue to be advertised in California, Arizona and even in Northern Mexico.  In this case the legal definition of “use in commerce” and “use in interstate commerce” sufficient to grant federal and/or state trademark rights becomes very significant.  In this scenario you may actually have priority of use.  You may not.  More complex legal analysis would need to be performed.

As such, if there is a clear answer to the priority of use issue and you have priority of use that will, more likely than not, be the strongest argument in defense of a cease and desist letter.  If priority of use is unclear or if you do not have priority of use have heart and continue to the next step of the evaluation: whether your trademark infringes upon the other’s pre-established rights.

Infringement Analysis

The next part of the analysis must focus on the traditional elements of infringement.  While  the various U.S. Circuit Courts of Appeals may differ slightly in their interpretations of the elements for infringement, universally the inquiries ask (1) whether  the marks are similar in appearance, connotation, or otherwise; (2) whether  the goods and services with which the marks are used are identical, similar, and/or otherwise related; (3) whether  the goods and services of the parties travel in similar channels of trade; (4) whether  the marks are marketed in similar manners; (5) whether consumers of the respective goods and services are sophisticated; and (6) if there are any instances of actual confusion among consumers as between the marks.

To determine the validity of the accuser’s allegations you must determine whether the factors support you or the other party in their allegations.

In regard to the first element, ask whether your mark is generally similar in appearance, meaning, or connotation to that of the party alleging infringement.  In this regard, the less similar the marks are the less likely infringement will be found.  In most instances the marks are not identical.  As such, in large part there is usually a bit of subjectivity involved in the evaluation of this element.   If both marks are WIDGET they are definitely similar, in fact they are identical.  But what if your mark is WIDGET and theirs is WIDGET MAX?  Are they similar?  Similar enough to create confusion?  Perhaps.  But as stated before there is a great amount of subjectivity involved in this element as well as sub-rules too numerous to mention and analyze in the context of this article.

Concerning the similarity of the goods and services, if your goods are shoes and the party alleging infringement also makes shoes that is pretty much dead on hit.  But what about if you make shoes and the other party has a shoe store?  Are the shoe store services sufficiently related to shoes such that confusion may arise among the relevant consumers of your respective goods and services?  Possibly.  So when analyzing this element always but yourself in the position of the average consumer and ask: Would I be confused between the two?  Would I think that the same people who make the shoes run the store that sells shoes?   Again, as above, the less similar the goods and/or services are the less likely infringement will be found.

The next consideration is whether the goods and/or services of the parties travel in similar channels of trade.  In other words, how do the goods or services reach the end consumer.  If you sell your goods exclusively through the Internet and so too does the other party they travel in the same channels of trade.  If the channels of trade are diverse, this favors you.  If they overlap, this favors the accuser.

The fourth element is how the respective marks are marketed.  If you both advertise exclusively through major television campaigns this factor will favor the opposing party’s case.  In the alternative, if the opposing party uses television and major magazine advertisements to promote their goods yet yours are sold exclusively by door-to-door salespersons then the factor will favor you.  So if the marketing channels are similar, that favors infringement.  If they are not, that favors your position of non-infringement.

Next, are the consumers for the respective goods or services sophisticated?  The best way to determine this is to ask whether purchasers of the goods or services are discerning in regard to their purchasing decisions.  For example, traditional “impulse” buys in a super market checkout line would not be considered discerning as consumers are less likely to pay significant attention to the manufacturer of goods which cost under $1.00.  In the alternative, in purchasing decisions which involve more substantial capital resources, such as the purchase of a new luxury automobile, consumers would be deemed more sophisticated insofar as it is presumed that consumers of such luxury goods are more likely to have conducted research and be educated in regard to such a purchase.  In this regard, the more sophisticated the consumers are who purchase your respective goods and services the less likely infringement will be found.

Lastly, are there any instances of actual consumer confusion between your goods and services using the disputed mark and those of the accuser?  If there are, that is strong evidence of confusion in the marketplace which would favor a finding of infringement.  Actual confusion may manifest itself in emails intended for one party but submitted to another in an attempt to reach the other.  It could also be in the form of complaints received by one party concerning the quality of products of the other.

In conclusion concerning  these elements, the more that favor you the less likely that infringement will be found.

Other Defenses

There are also other defenses to allegation of infringement which must be considered depending upon your unique circumstances.  Two of these are discussed below.

First, the Doctrine of Acquiescence provides a defense when a trademark holder fails to adequately enforce its trademark in a uniform and consistent manner.  For instance, while analyzing the cease and desist letter you discover that you are not the only company using the mark WIDGET for shoes.  If numerous other parties are using the same mark and the accuser has yet to enforce its mark against them the accuser may be precluded from enforcing the same against you for their failure to properly enforce their mark against all known alleged instances of infringement.

Second, the Doctrine of Laches provides that an accuser may not enforce its trademark rights against another if it has waited an unreasonably long period of time to do so.  This inquiry involves (1) understanding when the accuser knew, or should have known, about your use of the trademark at issue; (2) how long they took to initiate action against you to cease use of your trademark; and (3) whether this delay imposes any undue hardship upon you for their failure to more timely enforce their mark (i.e., you invested significant sums of revenue in a new advertising campaign for the trademark after they knew about your use thereof but before they issued the cease and desist letter notifying you of their objection to your continued use of the trademark).

If either of these two defenses is available both may strongly support a defense of any claimed infringement.

Everything You Say May Be Used Against You

Finally, we all have heard the famous Miranda charge in tv shows and movies: “You have the right to remain silent.  Anything you say may be used against you in a court of law.”

While this derives from criminal law there is a civil law component every trademark owner must be aware of: Everything you say, be it well-intentioned or not, can be used against you in a subsequent court action under a Federal Rule of Evidence concerning admissions against your interests.

You may not intend to sabotage your case, but if you are not savvy to all of the ins-and-outs of trademark law responding to a cease and desist letter without assistance can be rife with peril.

For instance, you receive a cease and desist letter and are of the opinion that there is no likelihood of confusion between the marks.  You call the lawyer for the accuser convinced you will be able to make this just go away.  During the conversation you innocently state the following: “I know the marks are similar but your client makes t-shirts – we make pants. How could there be any problem?”

In this conversation you have just made two critical admissions.  First, that the marks are similar.  Second, that the goods are both clothing and, by nature, similar.  How damaging is this?  You have just proved 2 of the 6 elements of infringement above for your accuser.  Congratulations.  Do you think you should continue the conversation now?

So be careful and, if at all possible, seek professional assistance from an experienced trademark counsel.  Not only will they be able to determine your rights and liabilities in the matter, but counsel can also discuss the matter with opposing counsel without the same being used as admissions against your interests.

Summary

In conclusion, if you receive a cease and desist letter demanding that you cease use of a trademark do not, under any circumstance, call the accuser or their counsel while still dealing with the emotions the allegations have undoubtedly evoked.

Rather, take as much time as you need to analyze the situation so that you can more objectively consider a planned response to the allegations.

Next, try and determine who has priority of use.  If you do, fantastic.  If not, there is still hope.

Next review the infringement factors listed above.  Who do they favor?

Are any other defenses available?

Lastly, consult a trademark lawyer regarding your rights and how best to respond to the letter.  You’ll be glad you did.

About the Author:

The Trademark Company provides the most comprehensive suite of trademark services available online.  From Trademark Research and Trademark Registration to the Enforcement of Your Mark(s) our company will protect your business and brand identity.
Our company is comprised of an experienced team of professionals. We work with our clients to help develop their name, logo or brand presence and ensure it is secure and stays that way. From international and federal trademark filing registration to litigation services, we are there for our clients every step of the way.