What Should You Do If You Receive A Cease & Desist Letter?

What should you do if a big company sends you a threatening letter alleging that you are infringing their trademark based on the existence of one or more of your pending trademark applications.

If you are clearly infringing their trademark, you should cut your losses and comply to avoid being sued. Also, a trademark search before filing your trademark applications could have prevented this situation.

But in other cases, the allegations might be a bit of a stretch. It may even just be a tactic to scare off smaller business owners so that the bigger company can have a broader scope of trademark rights.

One such tactic being to boldly claim that the bigger company’s customers would likely be confused if you continued using your trademark, even if you aren’t selling competing products or services, but then offering to stop chasing you if sign something promising that you restrict your trademark application to cover a narrower scope of products or services.

That being said, some of those bigger companies have the time and resources to make these types of threats and spend $10,000+ to push a losing case to oppose your trademark application for 2-3 years. Unlike with a trademark infringement case with the Federal Court, there is currently no ability for the winning party in a Trademark Opposition Board proceeding to have any of its legal costs paid by the other side.

So unfortunately, to save time and money, sometimes you have to pick your battles and consider accepting a settlement offer even though you have a strong case not to do so from a legal perspective.

Please contact us by email at trademarks@kmblaw.com to learn more or to begin the process of making money with your trademarks.