What should be included in a trademark cease and desist letter?
When a business is put in a position where their intellectual property or business name is being misused or exploited by another competing entity, a trademark cease and desist letter may be in order.
For the recipient of such a letter to take it seriously and for it to have the appropriate legal validity, business owners will need to know what should be included in a trademark cease and desist letter.
When it comes to the core elements that a cease and desist letter typically needs to include, here is the checklist that you have been waiting for.
- Provide proof of the identification of your business, the trademark that is associated with it, and any other U.S. trademark registrations you may have.
- Clarify the main trademarking problem at hand with a statement regarding the issue of the conduct and usage of the trademark in question.
- Discuss the magnitude of the similarities between your business and the alleged infringer’s business, how the two identities overlap, and the commonalties between the goods and services you promote and the other party’s goods and services.
- Issue a statement that speaks to the strength of your trademark which is based on the length of time you have used it. Talk about the advertising efforts that have utilized the mark, your company’s position in the marketplace, as well as the public’s general ability to recognize your trademark.
- Talk about the ways in which both business’ face overlapping presences in promotional channels, advertising outlets, and in trade environments.
- Give a statement that is able to detail actual evidence of customer or client confusion. An example of this could be proving that your business has been contacted by customers that mistakenly assumed that they were calling the other company.
- Make mention of a specific proof that showcases how the alleged infringer has been using your trademark in bad faith intentionally.
- Offer examples of any previous actions that have been initiated such as any sort of extension time to object to a trademark application.
- Demand that immediate action be taken by the alleged trademark infringer or anything other similar legal requests for them to respond to these accusations.
- Include an exact period of time that the other party has to respond to accusations to clarify their position in the matter.
- Give clear disclosure of the potential penalties that can unfold if the other party remains negligent or doesn’t respond in a timely fashion. If you are prepared to litigate if need be, this should be included in this trademark cease and desist letter.
- Make sure that there is an inclusion of a disclaimer that the letter does not constitute a total and complete declaration of all of your rights. This is not a letter to limit your rights that have been stated or that have been unstated to the alleged trademark infringer.
- Provide an attachment of relevant exhibits of your trademark being used, such as copies of your marks as they have been associated with the other party’s goods, services, or advertisements.
In summary, the cease and desist will start off by highlighting the owner’s trademark rights, a description of the trademark, the goods and services associated with the mark, the strength of the mark, the first date the trademark was used, and the the extent to which the owner has proprietary rights to the mark.
The trademark cease and desist letter will describe the infringer’s trademark, their goods and services, and why this new mark infringes on the owner’s. The letter will also issue a series of demands that may include removing the trademark from any existing element of their business, paying profits, and a response by a set deadline.