How to Defend Against Online Trademark Disputes
Read the letter., Consult and attorney., Respond accordingly., Choose to do nothing., Negotiate with the trademark owner.
Step-by-Step Guide
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Step 1: Read the letter.
A cease and desist letter is sent through the mail, or as an email, and states or suggests that you are infringing on someone else's trademark and that you need to stop.
If you receive one of these letters, take it seriously.The letter should spell out how the individual or company thinks you are infringing on their trademark and it should request a response.
The cease and desist letter is almost always a precursor to litigation.
This is a great opportunity for you to resolve the dispute before it gets more serious. -
Step 2: Consult and attorney.
Before you respond to the letter, consider talking with a qualified IP attorney.
The attorney will be able to help you analyze the strength of the other party's claims and might suggest an appropriate response.
Within the IP world, there will be attorneys who specialize in trademarks.
To find one, use your state bar's lawyer referral service.
For example, in California, you can call the state bar and answer a few questions about your legal issue.
Once complete, an individual will send you information on a number of qualified attorneys in your area.When you meet with potential attorneys, be sure you ask them specific questions about your case.
In addition, be sure to ask if their usual clients are plaintiffs or defendants.
While you are neither at this point, you want an attorney who is used to defending against infringement claims.
Also, be sure you ask about fees.
While most attorneys charge for their services, you may be able to find one that will offer free or reduced cost services.
The United States Patent and Trademark Office (USPTO) has worked recently to increase the number of pro bono services available., If you or your attorney feels it would be best to respond to the cease and desist letter, you may do so in a number of different ways.
If you feel strongly that you are not infringing on any trademark, you might respond and deny infringement outright.
However, if you do so, you may antagonize the other party, which may lead to inevitable litigation.
On the other hand, you could respond and ask for more information regarding their claim.
For example, you could ask for more specific evidence regarding why he or she thinks you are infringing, In addition, you might inquire about their dates of first use (to see if you were using the mark first), whether their trademark is federally registered, and where, geographically, their mark is in use.All of these questions will help you understand the dispute and how to proceed. , Some letters are sent out to intimidate and scare individuals like you.
In these cases, the individual sending the letter is trying to mislead you with the hope you will stop using the mark or start paying for its use.
If you or your lawyer do not find any merit to the letter you were sent, you might not respond at all.
However, not responding may lead to legal ramifications in the future.
If you are found liable for infringement and you did not respond to the original cease and desist letter, the court may find you reckless and may require you to pay more monetary damages to the other party., If you do not think you are infringing on someone else's trademark, but you want to respond, you may try to settle your dispute and have them send a letter stating you are not infringing.
To do this, you will need to provide the other party with evidence that your mark is different or that he or she does not have protection over the mark in use.
If you can do this, you should ask the other party to enter into a written agreement stating no infringement has occurred.
Another situation in which you might consider negotiating is if you find that you are infringing on someone's trademark, even if it is inadvertent.
In this scenario, you might try to obtain a license to use the other person's trademark on mutually agreeable terms.If you agree to a license, you will usually pay a fee for the ability to use the other person's mark. -
Step 3: Respond accordingly.
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Step 4: Choose to do nothing.
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Step 5: Negotiate with the trademark owner.
Detailed Guide
A cease and desist letter is sent through the mail, or as an email, and states or suggests that you are infringing on someone else's trademark and that you need to stop.
If you receive one of these letters, take it seriously.The letter should spell out how the individual or company thinks you are infringing on their trademark and it should request a response.
The cease and desist letter is almost always a precursor to litigation.
This is a great opportunity for you to resolve the dispute before it gets more serious.
Before you respond to the letter, consider talking with a qualified IP attorney.
The attorney will be able to help you analyze the strength of the other party's claims and might suggest an appropriate response.
Within the IP world, there will be attorneys who specialize in trademarks.
To find one, use your state bar's lawyer referral service.
For example, in California, you can call the state bar and answer a few questions about your legal issue.
Once complete, an individual will send you information on a number of qualified attorneys in your area.When you meet with potential attorneys, be sure you ask them specific questions about your case.
In addition, be sure to ask if their usual clients are plaintiffs or defendants.
While you are neither at this point, you want an attorney who is used to defending against infringement claims.
Also, be sure you ask about fees.
While most attorneys charge for their services, you may be able to find one that will offer free or reduced cost services.
The United States Patent and Trademark Office (USPTO) has worked recently to increase the number of pro bono services available., If you or your attorney feels it would be best to respond to the cease and desist letter, you may do so in a number of different ways.
If you feel strongly that you are not infringing on any trademark, you might respond and deny infringement outright.
However, if you do so, you may antagonize the other party, which may lead to inevitable litigation.
On the other hand, you could respond and ask for more information regarding their claim.
For example, you could ask for more specific evidence regarding why he or she thinks you are infringing, In addition, you might inquire about their dates of first use (to see if you were using the mark first), whether their trademark is federally registered, and where, geographically, their mark is in use.All of these questions will help you understand the dispute and how to proceed. , Some letters are sent out to intimidate and scare individuals like you.
In these cases, the individual sending the letter is trying to mislead you with the hope you will stop using the mark or start paying for its use.
If you or your lawyer do not find any merit to the letter you were sent, you might not respond at all.
However, not responding may lead to legal ramifications in the future.
If you are found liable for infringement and you did not respond to the original cease and desist letter, the court may find you reckless and may require you to pay more monetary damages to the other party., If you do not think you are infringing on someone else's trademark, but you want to respond, you may try to settle your dispute and have them send a letter stating you are not infringing.
To do this, you will need to provide the other party with evidence that your mark is different or that he or she does not have protection over the mark in use.
If you can do this, you should ask the other party to enter into a written agreement stating no infringement has occurred.
Another situation in which you might consider negotiating is if you find that you are infringing on someone's trademark, even if it is inadvertent.
In this scenario, you might try to obtain a license to use the other person's trademark on mutually agreeable terms.If you agree to a license, you will usually pay a fee for the ability to use the other person's mark.
About the Author
Isabella Turner
Creates helpful guides on crafts to inspire and educate readers.
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