This past month has been heavy on trademarks for me. I have worked with several clients with regard to protecting their intellectual property and developing a plan for protecting it. As a result, I wanted to share some information with you that will help you as you keep an eye out for your intellectual property.
In other places, I have discussed whether you have a trademark or a service mark, what protections are available for your mark, what “infringement” actually means for you, and why you should work to protect your trademark. Today, let’s talk about the how. Once you know why you should protect your mark, what do you do when you find that someone is potentially infringing on your mark?
Write a trademark cease and desist letter. The first step doesn’t necessarily have to be me (though sometimes that is scarier). You simply write a letter telling the infringer that the mark is yours and that they should quit using it or you will have to take further action. This is the nice step. In many cases, it may be best to send a DIY letter before involving me (at least as far as the other side is concerned). It makes you seem reasonable. So, what does the letter look like?
I am so glad you asked.
The letter needs to outline, at a minimum, the following:
- A description of your mark – When you open your letter, let the person know what mark you are discussing.
- A description or evidence of their use of the mark – Let them know how they are using your mark. It helps when these two are placed side-by-side.
- When you first used the mark – You need to establish when you first used the mark to avoid any controversy down the road of claims they used it first.
- You are still using the mark – In your letter, you do not have to prove how you have continued to use your mark, but you can only protect it if you are still using the mark. Showing you never stopped using your mark is even better.
- They do not have permission to use the mark – it is possible that you have licensed the use of your mark to some (or even potentially the one infringing now), but you need to establish in your letter that they do not have your permission to use your intellectual property.
- Instances of confusion or damages you have incurred as a result of the infringement – If you discovered the infringement because of actual confusion of who was who, outline that. If you have actually lost business (and you have evidence), you should outline it here. This goes to establishing your case. You do not want it to be too detailed at this point. A simple statement that you are aware of instances will do here.
- A demand that the party stop using your trademark and a request for documentation on the plan to avoid infringment – If you don’t ask them to stop (cease and desist), what is the point of the cease and desist letter?
- A deadline to respond – This is important. You need to make sure there is a deadline on the demand. How else will you know to move forward. Calendar your deadline and take action like you said you would.
- Failure to reply will result in legal action being taken – Make sure to let them know what your next step will be. Even if it is “legal action”. Let them know what happens after your deadline.
Make sure the letter is professional. Make sure the letter is short. You are not writing a book, you are not proving your case, you are simply making them aware that you know they are using your mark. Of course, you can always ask me if I need to draft the first letter, but sometimes it isn’t necessary.
In my experience, most infringement is completely unintentional and can be worked out without lawsuits (or even lawyer involvement). If you do have someone who is infringing on your mark in an effort to pull business away from you, you need to get me involved relatively quickly. But, if someone simply starts a business using your trade name, it is possible they are doing their best and they did not do it on purpose, so take that into consideration.
But, you have to protect your mark or you may lose it.