Indiana Trademark Law: If You Receive a Cease-and-Desist Letter


What is a cease and desist letter?

A cease and desist (or demand) letter is correspondence that states or suggests that you are potentially infringing the trademark of another and demands that you stop using, or consider stopping use of, the accused mark. You should treat any such letter seriously. Before deciding how to proceed, consider your options as described below.

What are my options?

Because there are several ways to respond to a cease and desist letter, and these options may each have significant legal ramifications, we recommend that you consult an attorney experienced in trademark disputes. Among the options are:

1. Respond

(a) If you have a basis for doing so, you may respond to the letter and deny infringement; or

(b) You may respond by requesting more specific evidence as to why the trademark owner believes you are infringing its mark, including exploring dates of first use, whether the mark is federally registered, and the geographic areas where the mark has been used.

2. Do Nothing

You may elect not to respond to the letter or any follow-up letters. Some trademark cease and desist letters are sent in the hope that some recipients will be misled or intimidated into stopping or paying for use even though they do not need to do so. However, the decision not to respond should not be made lightly because doing nothing carries some risk. If you are later found liable for infringement, the court may determine that you acted recklessly and subject you to additional monetary damages.

3. Negotiate

You may negotiate with the trademark owner for a license to use the mark on mutually agreeable terms, or to obtain an agreement that you do not infringe the trademark.

4. File Your Own Lawsuit

You may want to explore suing the trademark owner for a “declaratory judgment” stating that your mark does not infringe the trademark.

An attorney experienced in trademark disputes can help you decide among these and other options and how to implement them.

Does receiving a letter from the trademark owner mean that I’m being sued or will be sued?

Receiving a letter, without more, does not mean that you have been sued. Generally, if a federal lawsuit is filed against you, the trademark owner must serve two documents on you: (1) a document called a “complaint,” which sets forth the claims made against you; and (2) a document called a “summons.” The “summons” is issued by the clerk of court, and identifies the court in which you have been sued, contains an identifying case number, and tells you when you need to formally respond to the complaint. Service is usually made by delivering the documents to you personally or by delivering the documents to a registered agent for your business. Because of this service requirement, you will usually know when you have been sued.

You should consult a trademark attorney if you think that you may have been sued. Please see the “Do I need an attorney?” section below for further information.

Again, an attorney with trademark expertise can help advise you about the various options available to challenge trademark registrations and applications. Please see the “Do I need an attorney?” section below for further information.

Do I need an attorney?

While you are not required to have an attorney to respond to a cease and desist letter, a trademark lawyer can help you understand the scope of your trademarks rights and the strengths and weaknesses of the allegations against you. Though the advice and representation by intellectual property attorneys can be expensive, the assistance of an experienced attorney can be very valuable. An Indiana trademark attorney may help you navigate the negotiation with your accuser and ultimately save you from additional costly legal problems.

Practice Tip: A trademark lawsuit requesting a declaratory judgment is not always a viable option. In MedImmune v. Genentech, 549 U.S. 118 (2007), the U.S. Supreme Court revised the Federal Circuit’s test for ripeness under the Declaratory Judgment Act, which had required a reasonable apprehension of a lawsuit in order to establish jurisdiction. The Court broadened the scope of declaratory judgment jurisdiction, holding that the totality of the circumstances should be evaluated in determining the existence of “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant relief.”

The information presented on this site does not constitute legal advice. It should not be considered to replace advice from an Indiana intellectual property attorney.

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