Trademark Law: U.S. Trademark Litigation and Cease and Desist Letters
By Justin M. Jacobson, Esq.

If a party believes that their ownership rights in a registered trademark are violated by another individual or business, this individual or company has a variety of available options to police and protect their rights. This might include potentially instituting a formal claim or lawsuit against them and engaging in trademark litigation. In addition to or in lieu of filing a lawsuit, the trademark registrant could instead send a formal notice letter commonly referred to as a “cease and desist” (C&D) letter.

What is a Cease and Desist (C&D) Letter? Why Send a Cease & Desist Letter?

A C&D letter is written correspondence that directs the other party to cease from their alleging infringing activities. The letter might also include a demand for compensation or other renumeration as well as contain other formal requests such as to remove or “take down” a damaging product. Additionally, the preparation and mailing of a cease-and-desist letter could be beneficial in a subsequent trademark action or litigation proceeding as the letter could later be introduced during a formal legal proceeding as evidence of notice of a violation. This is because the written correspondence is intended to provide the alleged infringing party with notice of their potential violation of the owner’s rights in a mark so that they will cease acting in the damaging manner. In fact, this correspondence could potentially be introduced during a formal legal proceeding as evidence of the party’s notice of their violation. In some instances, if a party receives a formal notice and disregards it, then this fact might enable the mark owner to proceed against the other party for “willful” infringement in addition to any other viable causes of actions.

Trademark Trial and Appeals Board (T.T.A.B.) – Opposition and Cancellation Proceedings

After a formal demand letter, the initiating party has a variety of options to proceed forward and prosecute their claim. For instance, the damaged party can file an Opposition Proceeding with the Trademark Trial and Appeals Board (T.T.A.B.) to oppose a pending trademark application on the basis that the application infringes or otherwise damages the owner’s trademark rights. (https://www.uspto.gov/trademarks/ttab/initiating-new-proceeding) Alternatively, a party can initiate a Cancellation Proceeding with the T.T.A.B. in an attempt to cancel an infringing registered mark when the mark violates another party’s rights. Additionally, a damaged party might turn to other means, including exploring obtaining an injunctive relief to prevent an existing infringement.

In lieu of the above options, a damaged party could also initiate a formal lawsuit in state or federal court or even with the U.S. International Trade Commission.Since a trademark owner can acquire rights through “common” law as well as through state enacted legislation, a registrant can utilize either federal or state courts to prosecute a party that violates federal and/or state trademark laws, such as the federal Lanham Act.

Trademark Litigation – Likelihood of Confusion, Tarnishment, Blurring

When pursuing a trademark infringement claim, there exists several different causes of action that might provide a party with a basis to initiate their lawsuit. To commence a legal action, the damaged party (the plaintiff) files a document (the “complaint”) with the appropriate legal body such as a state or federal court or with the T.T.A.B. The information contained in each complaint varies based on the particular legal cause of action and relief sought. One potential cause of action is for a “likelihood of confusion” between a party’s trademark and another’s mark. In addition to or instead of this cause of action, there might be a claim by a damaged party for “tarnishment” of an existing mark as well as potentially a claim for “dilution” of a famous mark by another party’s use.

Ultimately, the adjudicating body determines whether another individual or company’s actions are a violation of the other party’s existing trademark rights. If a party is found to have violated another party’s trademark rights, then the damaged party might be entitled to recover the damages they actually suffered as a result of the infringement. This winning party might also be entitled to possibly recover their attorney’s fees (the amounts spent by the party pursuing the claim) as well as potentially receiving statutory mandated amounts called “statutory” damages for instances of willful infringement.

Since every situation is different, it is important that a trademark owner is aware of their continued duty to police and stop any infringements, which could include sending “cease and desist” letters to offenders as well as filing a state or federal lawsuit or a T.T.A.B. proceeding.

This article is .not intended as legal advice, as an attorney specializing in the field should be consulted.

© 2022 Justin Jacobson Law, P.C.