The purpose of a Trademark Cease and Desist letter is to notify an alleged trademark-infringer that there is indeed trademark infringement underway and stipulate the trademark holder’s demands and threats if those demands are not met. Trademark Cease and Desist letters elicit wildly different mental and emotional reactions, depending on whether you are on the sending or receiving end of these letters. This article will cover this topic in depth.
A trademark may be a name, logo, slogan, motion, or sound which when used in conjunction with the sale of a good or service, serves as a source identifier and distinguishes the proprietor of the trademark from its competitors. While a trademark may only be registered in the United States Patent and Trademark Office (USPTO) if the trademark is actually used in commerce, applicants may apply for a trademark under an Intent-To-Use designation, stating simply that while the applicant is not yet using the trademark in commerce, he intends to use the trademark in commerce in the future. Once the applicant uses the trademark in commerce, he must submit a declaration of a statement of use, along with a “specimen” which demonstrates that the mark is in fact being used in commerce. If the specimen is accepted and the USPTO trademark examiner does not flag any procedural or substantive issue with the application, the trademark will register. This is the key point; once the applicant obtains a registered trademark, he/she immediately obtains the sole and proprietary right to use the trademark in conjunction with the designated goods/services and as a corollary, stop another from using the mark with sufficiently similar goods/services.
A commonly misunderstood feature of trademark law is that not only do trademark owners have the right to enforce their trademarks, they have an obligation to enforce their trademark rights. If a trademark owner does not satisfy his affirmative obligation to police and enforce his trademark rights, the trademark may (after widespread, unauthorized use) lose its distinctiveness and therefore its status as a source identifier, or trademark.
To underscore the immense importance the Federal Government places on protecting ones trademark rights and the fundamental purpose of enforcing trademark rights, it is worthwhile taking a deeper look at the Lanham Act, which is the federal legislation governing trademark law. Congress enacted the Lanham Act in 1946, 15 U.S.C. § 1051 et seq. (“Trademark Act”) and explained that the statute served dual purposes:
One is to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get. Secondly, where the owner of a trade-mark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats. Senate Rep. No. 79-1333 at 3, 5 (1946).
This is a remarkably powerful affirmation because of its scope and comprehensiveness; simply, the purpose of the Trademark Act is to guard against scenarios by which the introduction of a potentially infringing trademark would lead to consumer confusion AND it protects owners of more famous and ubiquitous marks from blurring or tarnishing of their image, even if there would not be consumer confusion! 15 U.S.C. § 1125. More on blurring and tarnishing later.
Hopefully, it has now become apparent that monitoring and enforcing ones trademark rights is absolutely essential and to this end, trademark owners have several tools and resources available to them to effectively (and proactively) monitor the emergence of new trademarks in the USPTO and the broader marketplace. Specifically, trademark owners should frequently screen;
Trademark owners who are actively involved in their industries may very well simply stumble across an infringing trademark (if a startup shoe company called itself “Badidas”, you can bet Adidas would hear about it) but more often than not, trademark owners will hire trademark lawyers to actively monitor infringing trademarks on their behalf. Here, the trademark owner will instruct his trademark attorney of the desired scope and breadth of search parameters, according to the owner’s industry and frankly, budget. The hired trademark attorney will then provide a bimonthly search report, including potentially problematic United States trademark registrations and even foreign trademark registrations along with an analysis of the severity of the problem (how much conflict is there between your mark and the violator’s trademark). Next, the trademark owner must decide along with his attorney if the nature of the violation may warrant enforcement measures, starting with a trademark cease and desist letter.
Remember, the trademark owner hires a trademark attorney to not only identify potentially infringing trademarks but also to provide a professional analysis of the scope and severity of the “violating” trademark. The two initial and indeed main factors that will be considered to evaluate scope and severity, of infringement, are the sufficiency of similarity between your trademark and the offending trademark and the sufficiency of similarity between the goods/services you sell and the goods/services sold under the offending trademark.
Depending on whether or not the trademark attorney determines that there is indeed a sufficiency of similarity between the trademarks and/or the goods services, he may advise the trademark owner to either commence action against the potential infringer or refrain from expending resources on an unwinnable proceeding.
This “sufficiency of similarity standard” either vis-à-vis the marks themselves or the goods/services, falls under the likelihood of confusion legal doctrine, which is used to determine if trademark infringement has occured. Simply, would a consumer who views this new trademark come to believe that the source of this new trademark is the owner of the original trademark (a person seeing “Badidas” on shoes might think the Adidas corporation created them).
Before recommending a cease and desist letter, the trademark attorney is going to ask himself, what are the chances my client would actually prevail on a claim of trademark infringement?
Well, to mount a successful case of trademark infringement, the plaintiff will need to establish that he does in fact own the trademark, that he has a priority use of the trademark vs. the defendant’s use of the allegedly violating trademark, and finally, that there would indeed be a likelihood of confusion (or dilution/tarnishment – more on that later).
As to whether or not there would in fact be a “likelihood of confusion”, every Federal circuit court unfortunately has a different standard of review and uses its own multi-factor test but ultimately, nearly all circuit courts use the same basic factors;
As discussed earlier, the first two factors are the most important; similarity of mark and similarity of goods/services
Concerning the similarity of the trademarks, the marks do not need to be identical but rather sufficiently commercially similar so that the average purchaser may be confused as to the source of the marks. Similarly, the goods/services do not need to be exactly the same but rather related (existing in the same industry and field). The idea here of course is that the more similar the marks and the more similar the goods/services between the two marks, the greater the likelihood of confusion; the less similar the marks and the less similar the goods/services between the two marks, the lesser the chance of likelihood of confusion.
Trademark Tarnishment and Dillution
Less frequently, trademark cease and desist letters are sent when the trademark attorney determines that there may not be likelihood of confusion between the marks but there would be a risk of dilution or tarnishment if the infringing marks were to continue to be active in the marketplace. Simply, if the trademark holder can demonstrate that its trademark is sufficiently famous (like Gucci), then one cannot register a trademark on Gucci even for unrelated goods to Gucci’s primary goods and services. The idea here is that if a new Dog Food company were to call itself Gucci, the fact that no reasonable consumer would think THE Gucci is the proprietor of this dog food company does not matter; having a dog food company named Gucci is itself an injury to the Gucci brand and a very good reason to send a trademark cease and desist letter.
