A cease and desist document next to a gavel

After learning about someone else’s infringement of your trademarks, or if another company has accused you of infringing upon theirs, you need experienced legal representation to help you navigate the process that ensues.

For nearly three decades, the team at Gearhart Law has worked to safeguard the rights of clients ranging from individual entrepreneurs to multinational corporations. Resolving trademark disputes requires deep knowledge of intellectual property law, and we have a reputation for helping clients solve complex legal problems through quality service and advocacy. Contact our firm today for a case evaluation to discuss how we can help you resolve a trademark infringement dispute.

What Are Trademarks and Trademark Infringement?

Trademarks refer to the legal rights to use a mark, packaging, or brand look. A trademark helps consumers identify the producer or source of a product or service. Trademarks include brand names, logos, service marks, and trade dress (such as packaging, employee uniforms, or store design). A party may acquire a trademark by consistently using a mark or trade dress in commerce. A party may also register a trademark with the government, which puts competitors and the public on notice of the party’s ownership of the registered mark.

A person or company may engage in trademark infringement when they use a trademark or service mark to market or sell goods or services without the authorization of the trademark holder in a manner likely to confuse or deceive consumers about the source of those goods or services. When an individual or company infringes on someone else’s trademark, the trademark holder can request the infringing party cease using the trademark holder’s mark or trade dress. The first step in responding to infringement of one’s trademark typically involves sending a cease and desist letter to the infringing party. 

Understanding Trademark Cease and Desist Letters

A trademark infringement cease and desist letter warns an infringing party to stop their unauthorized use of another party’s trademark before the trademark holder takes formal legal action against the infringer. A cease and desist letter notifies the infringing party of the existence of a trademark and that their marketing or selling activities using the same or similar mark infringe upon that trademark.

Cease and desist letters allow infringing parties, especially those unaware of a similar valid trademark, to cease their infringing activities without further penalty. The letter also warns the alleged infringer that if they continue to use an infringing mark, the trademark holder will take legal action to obtain relief, including a court injunction barring further use of infringing marks and financial compensation for lost profits and other economic harm caused by the infringement. 

Crafting an Effective Cease and Desist Letter

An effective cease and desist letter should take a precise and professional tone. A hostile or aggressive letter risks escalating the dispute as the recipient may disbelieve the validity of the trademark holder’s claim and disregard the letter. A clear, organized flow to the letter can help convince the recipient of the strength of the trademark holder’s claim. A trademark infringement cease and desist letter should:

  • Identify the trademark(s) with specificity, such as by providing visual examples of the claimed mark or the registration number of a registered mark. 
  • Explain how the recipient’s activities have infringed upon the claimed mark by highlighting the similarities between the sender’s and recipient’s marks or providing evidence of consumer confusion between the sender’s and recipient’s goods or services. 
  • Demand the recipient cease using the infringing marks and set a reasonable deadline for compliance, as the recipient may need time to remove infringing goods from the marketplace.
  • Describe the consequences of noncompliance, such as a warning that the sender will file a lawsuit to obtain an injunction and monetary compensation. 

What Should You Do if You Receive a Trademark Cease and Desist Letter?

When you or your business have received a trademark infringement cease and desist letter, you must respond promptly to protect your interests and avoid potentially severe consequences. Perhaps most importantly, you should obtain legal counsel from an attorney who can review the letter and advise you of your rights and options.

An attorney can help you understand the strength of the sender’s claim and determine whether your activities might constitute trademark infringement. Based on your counsel’s advice, you can evaluate potential responses to the cease and desist letter, including choosing to cease the alleged infringing activities, requesting a license to use the mark (when appropriate), or sending a response refuting the letter’s allegations. 

Legal Remedies for Trademark Infringement

A trademark holder who proves that another party has infringed on their mark can obtain various legal remedies from the court, including:

  • Injunctive Relief — Upon filing a trademark infringement lawsuit, a mark holder can request the court issue a temporary injunction barring the defendant from continuing the alleged infringing activities. If the trademark holder wins their case, the court can convert the temporary injunction into a permanent injunction.
  • Monetary Compensation — In a federal trademark infringement lawsuit, a trademark holder may recover financial compensation if they can prove consumer confusion or unjust enrichment by the infringing party. Categories of compensation in a trademark infringement case include the trademark holder’s financial losses (such as lost sales/profits, damage to goodwill, or the cost of a royalty to obtain a license to use the mark), disgorgement of the infringing party’s profits, and, in rare cases, the trademark holder’s attorney’s fees and legal costs. 
  • Other Relief — A trademark holder might obtain other relief deemed necessary and just by the court, such as requiring the infringing party to conduct or pay the cost of corrective advertising to alleviate consumer confusion.

Contact an Intellectual Property Attorney Today

If you’ve discovered someone infringing upon your trademark or received a trademark infringement cease and desist letter, get the legal counsel you need to protect your rights and interests. Contact Gearhart Law today for a confidential consultation with a knowledgeable intellectual property attorney to discuss your options for resolving a potential trademark infringement case.