One of the benefits of obtaining a federal trademark registration is that it tells others that you own your trademark. They can conduct a trademark search and find your registration. Or if they come across your trademark, they will see that you are using the ® symbol. This means that you have registered your mark. However, new businesses frequently fail to do their due diligence, so you can still easily end up with issues of trademark infringement. In cases of copyright infringement, you may believe that someone has stolen your work in an effort to profit from it. In both types of infringement matters, the dispute typically begins with one party sending a cease and desist letter to the other. While sending such a letter sounds quick and easy, there are some very good reasons not to attempt to do-it-yourself.
Understanding the Law
This is the most obvious reason, but one that I don’t think most people fully appreciate. Having an understanding of the law is crucial to trademark infringement matters and how they are handled. That is because with trademark infringement, you need to know how and when trademark rights were acquired by both parties. For example, you might find someone using a confusingly similar trademark and want to send a cease and desist letter. But what if they were actually using the trademark before you? In that case, you might actually be the one infringing… and you’ve just let them know about it, too.
Another example where not knowing the law could come back to hurt you is if your trademark registration is subject to challenge. Let’s say that you own a registration for your trademark, but that you have not used it in commerce for several years. Going after a potential infringer could be a bad idea. They could try to cancel your registration on the basis that you have abandoned the trademark. If you filed your application yourself, there are a number of common mistakes that could make your registration subject to challenge, as well.
For copyright infringement matters, you need to know if your work is protected under copyright law. You may also need to determine when the infringement commenced in relation to when you filed for your copyright registration. If you never obtained a copyright registration, you need to understand how that impacts the damages that you might receive if you file a lawsuit. And you will have to obtain a copyright registration before you can even file an infringement lawsuit.
A good attorney can spot all of these issues. They will let you know if there are any red flags before you send your cease and desist letter. You want to make sure you’re on solid legal ground before claiming someone else is infringing on your rights. Working with an attorney helps you do that.
How Serious Are You? Your Cease and Desist Letter Can Say a Lot
A lot of what happens in infringement matters, especially in the early stages, has to do with appearances. Drafting and sending your own cease and desist letter costs you almost nothing, and the recipient will take notice of that. It’s no secret that a lawsuit can cost hundreds of thousands of dollars to pursue. If you are not willing to spend hundreds of dollars to have a professional send a letter, then what are the odds that you will hire one to file a lawsuit? Just having an attorney draft the lawsuit may cost 10 times as much as a cease and desist letter.
By avoiding the initial cost of an attorney, you are signaling to the other party that either you do not have the money to pursue legal action, you do not actually care enough to pursue legal action, or both. Either way, why would you take this person and their demands seriously?
Professionalism and Opening a Dialogue
Infringement can be an emotional thing to deal with. If you own a trademark, you would hate to think that someone else is piggybacking off of the success of your business. And what if the infringer is providing a bad customer experience, which people mistakenly blame on you? These situations happen all the time. If you are an artist, your work is your life. Imagine working for years on a project, just to have someone else copy and make money off of your work. It is understandably difficult to be calm, rational, and level-headed in these instances.
You need to be able to effectively communicate with the other side. It is certainly important to get the seriousness of the matter across. However, being civil will help to reach the goal, which is resolution and not just fighting for the sake of fighting. Taking a step back and communicating through your attorney is going to help you resolve the issue more than handling communication yourself.
Need Assistance with an Infringement Issue?
If you have an infringer of your trademark or copyrights that you need to deal with, I strongly urge you to speak with a professional before sending a cease and desist letter. If you would like my help, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
