Many businesses receive letters instructing them to stop using a certain name or logo. These are often referred to as “Cease & Desist” letters. While some letters cause well-publicized disputes, most are handled quietly and amicably. However, because many are handled privately, new recipients are unaware of the options available to them. If you have received a Cease & Desist letter, you should know the following:
Do not immediately raise the white flag.
Just because you have received a letter telling you to stop using a certain name or logo does not necessarily mean you have to. Do not be intimidated by strong, definitive language or legalese. You have rights in your names and logos just from using them. As a result, there are many ways to respond to a Cease & Desist letter. Giving up does not need to be one of them.
You have rights.
Whether or not you have registered your trademark, you have rights to a name or logo just by using it in commerce. In the event of a Cease & Desist letter, it depends on the nature and extent of your rights versus the rights of whoever sent you the letter. Just because the sender has a federally registered trademark does not mean you are out of luck.
Each business’ rights depend on a number of factors, such as: where each company used the name or logo, which used it first, when a trademark was registered, and more.
The company with stronger rights will have more bargaining power, but even a weaker company may not have to stop using the name or logo.
Further, the letter sender might not even have the rights they claim. A recipient of a Cease & Desist letter can fight back by attacking the validity of the sender’s trademark. If the trademark should not have been registered in the first place, or the sender has failed to enforce it, it could be cancelled.
It’s not all or nothing.
Similar names and logos can and do coexist in the marketplace. Sometimes this coexistence is the result of an agreement between businesses. Other times, a business that used the name or logo first but did not register the trademark with USPTO can still establish their right to continue using the name or logo.
Also, some businesses’ demands change after a little pushback. Some ask that others only slightly change their name or logo to avoid confusion. Others offer financial assistance for rebranding and loss. Most genuine issues are handled amicably and quietly. Not giving in does not mean you will need to go to court.
We can help.
There is no one-size-fits-all strategy to respond to Cease & Desist letters. To help, we can:
- Determine you what rights you already have;
- Identify and assess possible solutions;
- Provide a Cost/Benefit Analysis of different solutions and help select the best way for your unique business to respond;
- Leverage your rights to obtain an outcome that is beneficial to the interests of your business;
- Act on your behalf to communicate and negotiate with senders of Cease & Desist letters.
Contact us today by email or by calling 440-333-3800.