Should I Send a Trademark Cease & Desist Letter?

Hi There,

First of all I know you’re not my lawyer, and I won’t hold you to anything you say. Here’s the situation…

I’m a small company with a registered trademark. Let’s say my trademark is “Paper is Pink”. Shortly after I applied for my trademark, big corporate conglomerate “ABC Mega Corp” applied for the trademark, “ABC Paper is Pink”. They basically used my mark, and added their company name to the front.

We applied for our respective trademarks within days of each other (and I applied first, and had an earlier “use in commerce date”), but because of the proximity of the application dates, I don’t think they were aware of my application when they submitted their application.

They filed for an extension to oppose my trademark, but they never did oppose (because I don’t think they had any grounds) and I now have a registered trademark.

The service my business sells is complimentary to the product ABC Corp sells. Kind of like the relationship between paper and printers, or film and cameras. Their product is a consumable that people would use in the process of using my service. Because of that, even though I am much smaller than them, people might think I am a subsidiary of ABC Corp or that their product is recommended for use with my service (think HP Paper and HP printers)

Anyway, I’ve formally opposed their trademark application through the Trademark Trial and Appeal Board. ABC Company’s attorney contacted me and wanted to hear what my concerns were to see if we could resolve this.

The attorney basically listened to my concerns, and will send an email to the ABC corporate contacts summarizing them and will get me a response within a couple of weeks.

So far I’ve been doing this on my own. I applied for the trademark on my own, and filed the opposition after studying many other opposition documents at the Trademark Trial and Appeal Board. At one point I consulted a trademark attorney, but I ended up paying a lot of money for them to tell me stuff I already knew.

Even though ABC Company doesn’t have their trademark yet, they are heavily promoting it. They are using it in press releases, have changed the names of their products, and in Europe anyway have sponsored events using the name.

I’ve got two questions:

  1. Even though I am going through this opposition process is it also worthwhile to send a Cease & Desist letter? Will it help me negotiate a better settlement or strengthen my case? From a practical standpoint, I think ABC Company will ignore it since they already have a lot tied up in the name, and I am a small company.

  2. When the attorney spoke to me, it was a week before their reply to the opposition was due at the TTAB. They asked if I minded if they requested that all the deadlines be extended by six months. Thinking that this process would take some time (and hoping that we can come to some amicable resolution) I consented. Does it weaken my case at all that I consented to this (since I am alleging that my trademark is being infringed upon and being damaged by them using their mark)?

If you wanted the specific trademarks in question, or links to the opposition documents, I could PM them.

Thanks in advance.

I had a similar situation, but where the person applying for the trademark was doing it out of spite. Even though they had no case it cost us a lot of money in lawyer’s fees.

If you think the trademark is more important to them then you, I’d suggest asking for money to cover the cost of you changing your name plus loss of “good will”. Going to court is going to costs 10s of thousands of dollars to both parties.

You have the registered trademark, and therefore you are entitled to protect it. So prima facie, there is nothing stopping you from sending a cease and desist.

However, I’m not clear yet just as to how you are being harmed by the other party’s use of the mark. Is it simply that consumers would be likely to be mislead that you are somehow related to the other party? You need to be concrete in the kind of damage you are suffering.

From what you’ve said it seems pretty clear that they are using your mark, but I also want you to be sure that they are using your mark in relation to the goods/services that you have protected in your trademark registration.

Also, hire a lawyer to write the cease and desist. Why? Because the other party is a large corp, not a mom and pop operation and you could get yourself into all sorts of trouble with a litigant who doesn’t mind throwing money at the problem. Also, if you really don’t have a legitimate complaint, then you could get yourself into a commercial disparagement issue. Not pretty.

I’m being damaged (or potentially being damaged) in the following ways:

  1. If ABC Corp’s Alleged Mark was allowed to be registered, consumers will incorrectly assume that the product of my service should be used with ABC Corp’s product. If they can’t buy ABC Corp’s product, or don’t want to, they may not buy my product.

  2. Consumers may believe that my service is in fact provided by ABC Corp so if ABC Corp’s reputation gets tarnished, mine will as well.

  3. A lot of my business is through word of mouth. People will say, “I just used [Name of my business, which is also the trademark in question] - it’s great”. The number one search term that sends traffic to my site, is my trademark, because people are specifically searching for me. However, now that ABC Corp is using my trademark, they are coming up on page one of Google, and I fear that as they continue to expand their reach, and more web sites write about their product (which again, is my trademark with “ABC” in front of it) ABC Corp will crowd me out, and ABC Corp will appear first in Google’s results.

Well, that’s where the goods are complimentary - not identical. What I protected in my mark isn’t the same thing as what ABC Corp produces, but similar to the paper/printer example, their product feeds my service.

With the Cease and Desist letter, I’ve gotten some copies and templates of letters and I believe I can write a letter with all the correct legalese. Do you think it will make a big difference on whether they get it on my letterhead vs. a lawyer’s?

Also, if my main objective is a negotiated settlement, do you think I will be in a stronger, neutral, or weaker position if I send a letter? Thanks

To be honest I’m just not comfortable giving any further detailed advice. I want to help, but I know trademark law in the US can be very tricky and I don’t know enough to be able to help you any more. I practice trademark law, but not in your juristiction. Anyway, you’ve done the right thing by opposing the other party’s application. If it turns out that the opposition board let the application go through anyway, then it is because the opposition board do not think the marks are similar. That will greatly reduce any chance you have to claim trademark infringement, I think. I hate not being of any more help to you, but I do recommend talking with a lawyer before you send out a C and D letter. Is there any free legal service in your area?

You really need a lawyer, and one who knows this stuff.

I am not any kind of lawyer, but sometime in the last couple of years I edited a law casebook about intellectual property, including service marks. The mere fact that you’ve registered a certain sequence of words doesn’t guarantee that somebody else can’t use that same sequence with another word or two fore or aft.

For example, if you register a mark of something like “Corporate Health Services” you probably won’t be able to keep somebody else from using “Acme Corporate Health Services” to describe a business that provides or has something to do with health care provided to people in some kind of workplace. So, obviously, the specific names are important.

But this is very, very general advice. The cases, and there were a lot of them, can get extremely convoluted. A good IP lawyer will be real familiar with this territory. For instance, I do remember reading one case where a c&d letter of the sort you describe had some sort of effect on the financial settlement at the end of the case, but I don’t remember if it was a good effect or a bad one for the side that wrote it. (My guess would be “good” but it is only a guess.) An intellectual property lawyer would probably know this without even having to look up the case.

IANAL but it doesnt matter if there is an injury. IIRC with trademarks you either defend them or lose them.

They sound like they have a lot of $. Any chance of licensing the trademark to them?

IANALE, but that would be my suggestion too- negotiate a license fee, say, enough to cover the cost of changing your brand and promoting the new mark- and think of something new.

If ABCwhoever is a reputable company, you might even consider allowing them to retain the mark in exchange for promoting your product or service.

If you do go with either of the above, you’ll still need a lawyer to review the terms of whatever agreement you reach- or better still, negotiate it for you.

While the cost of litigation would be negligible (assuming you win), it’s probably not worth the risk unless you’ve come up with The Best Trademark Ever.

From the OP’s description this seems to be a pretty clear case of “reverse passing-off.” That is, the senior mark user is a small company, so everybody’s going to think that the OP is either part of the big junior user’s company or that the OP is in fact the infringer. Not a good situation, and it’s a pretty clear harm.

These are complementary products. If you come across a “Coca-Cola” brand drinking straw, aren’t you, as a consumer, going to assume that it is produced by, or produced under license from, the same people who make “Coca-Cola” brand beverages?

Aaelghat, you need a trademark lawyer. Sending a cease-and-desist letter on your own letterhead will most likely just lead the junior user to believe that they’re dealing with an amateur and they will continue to fuck around with you.

The lawyer will also let you know whether it’s a good idea to license your mark. Indeed, you have set forth some very good reasons why you don’t want the other party to use your mark in any circumstance.

I’m not sure where you’re located, but my company hired a trademark lawyer last year and it was not that expensive. We were in the same boat as you are with regards to being a small company not really able to fight a big company.

We put $500 down and they spent some time on the phone with us, wrote a letter (or two?) and reviewed our issues. They charged in 15-minute increments I believe. We never had to pay more than the original agreed-upon $500. Actually I think we only racked up $375 worth of time with them but they got to keep the $500 because that’s what we agreed.

Anyway, it was $500 well-spent. It may not be as expensive as you think to hire a lawyer, and well worth it.