Getting a Cease & Desist Letter

Often the first sign you’ll get that someone thinks you’re infringing their trademark is when you get a ‘cease and desist’ letter. It frequenly comes by registered mail, and is either from the owner of the other mark or their lawyer. It can vary in tone from nice to nasty. It usually says something like “You’re infringing on my mark. Stop it or else.”

Assessing the ‘Infringement’ – Factors to Consider

To determine how deal with a claim by somebody that you are infringing their trademark, you’ll have to consider many factors. You can find out about some of them yourself. For others, the help of an expert is really useful. Some of these factors include:

Registered or Unregistered Trademark?

Is their trademark registered or not? Is yours? The rights and remedies for a registered trademark are much stronger. A list of registered Canadian trademarks can be found at the CIPO website.Has There Actually Been An Infringement?

Even if someone says you’re infringing, they may be bluffing or just plain wrong. The basic test the courts use is whether an ordinary consumer would, as a matter of first impression, be confused.If there’s been an infringement, how do you deal with it?

If you have infringed somebody else’s mark, do you get out of the situation gracefully and with minimal disruption to your business or do you fight?

Are You Being Intimidated?

Some businesses, especially the Big Brands, will protect their trademarks quite aggressively, sometimes alleging trademark infringement when there isn’t any. The effect is to scare off other potential users of similar marks. Some people resist the intimidation. Others question whether is it worth the time, trouble and money and move on.

Is it worth the money, aggravation and business uncertainty?

It can take years to resolve these issues, even if you are right. In the meantime you have the uncertainty of spending money on a brand you’re not certain about.

What To Do

Your choices basically fall into three categories:

1) Do Nothing

It’s not the recommended option, but I’ve seen many people do it. Sometimes it seems to work, and sometimes it doesn’t. The danger is that you leave yourself open to some pretty dire legal consequences, which can include serious damage awards against you. You should at least figure out what the risks are. If it’s possible you might lose all your business profits, then it’s probably worth taking seriously.

2) Respond Yourself

The best case scenario is that you get a nice polite email from the owner of a trademark that is similar to yours, and in a similar business. The owner says you appear to be infringing his/her trademark. You email back and forth a few times and work everything out. No lawyers are involved, no costs are incurred and no problems arise later no. I know of many small businesses who have been successful in working things out on their own, but obviously you must be very cautious.

3) Hire Someone Else To Deal With It

Whether there has been a trademark infringement or not is a legal question, and the only people permitted and qualified to provide such advice are lawyers. Also, if the matter is going to be resolved by an agreement, a lawyer is usually needed.

Our firm, Smuglers LLP, has years of experience helping small business through these issues as quickly and inexpensively as possible. If you think someone may be infringing your trademark you can give us the details by email, fax or mail. We’ll get back to you with a price quote on our charge to provide an opinion and write a ‘Cease and Desist’ letter. This is typically about $200-$300.