17 Seconds #26

What should I do if I get a trademark cease and desist letter?

Hikers confront a bear. Remember, he's more afraid of you than you are of him. And that he can rip your head off.

You should probably cease and desist.

Chances are you didn’t search your trademark before using it. Or, in order to “save” money, you didn’t register your trademark.

I know that everybody loves their names and logos, but they are both really a dime/dozen, whereas trademark infringement is forever. In most cases, it’s way easier (and cheaper) to cease and switch than to stand and fight.

In an ideal world, your startup would be the first to use its trademark, first to file its trademark application, and first to register the corresponding domain name and usernames. But the ideal situation is rarely the real one. In most trademark disputes, one party was first at something, and the other party was first at something else.

If you are on the receiving end of a trademark cease and desist letter, and if that letter was written by a law firm with a good reputation, then chances are you are in the wrong and should cease and desist. There are ethical consequences for sending baseless C&D letters, and good trademark lawyers know this.

If, on the other hand, the cease and desist letter came from the trademark owner, then you may have a better chance of winning the dispute. Many trademark owners misunderstand the rights that a registered trademark gives them. You do not get to “own” your trademarked term. You only get to enforce your trademark rights when the legal standard of “likelihood of confusion” has been met, and that only occurs when both the trademarks and the products/services covered by them are close enough.

Like art, trademark lawyers know “likelihood of confusion” when they see it.

So your trademark adversary may be a sheep in bear’s clothing (to mix my metaphors to match the above cartoon), or your adversary may, in fact, be a bear. In which case, the bear can rip your head off.


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