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Welcome to Trademark Law Radio, my name is Trademark Attorney Enrico Schaefer. Today, we’re going to talk about a very important topic and one that is often overlooked by trademark attorneys and their clients alike.
There is a big difference between a trademark infringement cease and desist letter and a trademark notice letter. A cease and desist letter is one that is going to say, Stop! Don’t do this anymore and potentially pay some damages. A trademark cease and desist letter is one that is meant to be threatening. A cease and desist notice letter or a trademark notice letter is fundamentally different. It is far less threatening and its goal is to put someone on notice of your trademark rights.
Now, there are several instances where a cease and desist notice letter, a less threatening letter, is going to be much more effective for you in accomplishing your client goals. A good trademark attorney spends some time trying to understand what is it that the client is attempting to accomplish. Sometimes, the client wants money. Sometimes, the client has no interest in money and really trying to accomplish a result. Sometimes that result is that they want to make sure the other side, the potential adversary or particular company, understands that we have trademark rights, and we want to put them on notice of those trademark rights. Sometimes, you’re anticipating that the adversary may do something next that may threaten, harm, or diminish your trademark rights.
Now, hopefully you have a trademark registration in place in order to give you maximum protection for your trademark. Hopefully, you and the attorney that is advising you have put in place a trademark monitoring and protection program, so that you are stopping third parties from infringing your trademark.
For instance, let’s say someone registers a domain name but they aren’t using it yet. And so, keep in mind, you could have Delta Faucet and Delta Airlines. They’re both Delta and they co-exist in the world of trademarks because those two companies, fundamentally, do different things. Therefore, their trademark uses do not cause consumer confusion in the market. Everyone knows that Delta Faucet is not Delta Airlines. So, if someone registers a domain name and you don’t know what use they’re going to put to the domain name, and that domain name incorporates your trademark and you are worried about potential trademark infringement, then a trademark cease and desist notice letter or a trademark notice letter may be the appropriate thing to send to make sure they understand your trademark rights.
Now, why is this important? Because the number one defense trademark attorneys hear from adversaries is that they were unaware of your registered trademark, they didn’t review the United States Patent and Trademark Office (USPTO) trademark registration database before registering the domain name, or making some other internet or online use of a mark. What you want to do is be able to take that away from them. You want to be able to say that we sent you a letter on x date and we put you on notice. We sent you a cease and desist in terms of a notice letter and, therefore, you knew that we had a registration for our trademark, that it was a registered trademark. You understood what purpose we used the trademark for, the classification of goods and services, the descriptions of products and services, and then you went out and put a website up on it or sold it to a third party, etc.
So, a cease and desist notice letter is really a letter that is designed to preclude someone from doing something in the future. A classic trademark cease and desist letter is designed to stop someone from doing something they are already doing.
My name is Trademark Attorney Enrico Schaefer, and we’ll see you next time.
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