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When a cease and desist letter alleges trademark infringement, what are your options?

As a business owner, you've undoubtedly invested countless hours and immeasurable energy into not only getting your enterprise off the ground, but also ensuring its continued profitability. Indeed, these herculean efforts likely all started with the invention of a product or service in which you firmly believe, and, by extension, the development of a brand name or logo reflective of the unique nature of your creation.

Given this reality, it can prove to be incredibly jarring when a successful entrepreneur receives some a cease and desist letter accusing them of infringing upon the trademark of another and demanding that they stop using the offending mark. 

Experts indicate that while business owners must take such communications seriously, it's also important for them to understand that they have options.  

Firstly, they urge business owners to understand that the receipt of a cease and desist letter does not necessarily mean that they are being sued. If this were true, they wouldn't be served with just this correspondence, but rather a summons -- a document indicating that a civil lawsuit has been filed against them -- and a complaint -- a document setting forth the nature of the claims in the lawsuit.

As to what can be done in response to the receipt of a cease and desist letter, experts indicate there are essentially four options, all of which should very likely be explored or undertaken with the assistance of a skilled legal professional:

  • Respond: Request more information as to why the trademark owner believes infringement has occurred, including evidence of federal registration, dates of first use and geographic deployment
  • Negotiate: Undertake negotiations to secure a license or an agreement that infringement has not occurred
  • Ignore: Refrain from taking any action in recognition of the fact that these letters are sometimes sent in the hopes of stopping businesses from using their mark and/or getting them to pay money despite there being no need to do so
  • Pursue legal action: File a lawsuit against the trademark owner seeking a declaratory judgment indicating that no trademark infringement has occurred  

It bears repeating that business owners must strongly consider consulting with a legal professional before proceeding with any of the foregoing options. It also bears repeating that business owners should know that they have options if sent a cease and desist letter alleging trademark infringement.

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