You received a “cease and desist” letter. Now what?

Everyday there are many trademark infringements that are not noticed or ignored. But then there is the trademark owners who are trying to protect and enforce their trademark and so sends out a “cease and desist” letter to any party they think is infringing on their mark. If you receive one of these letters, do not panic. Even though they often have very tight parameters and stern warnings, that is just lawyers or owners “saber rattling” as I call it.

handling trademark complaintsA lady once called me and hysterically said it had been their company name for two and half years, how could there be a problem? And in another case I will never forget, a young startup entrepreneur got his letter with the dreaded “10 days to change his trademark or suffer a big lawsuit, blah, blah.” He and I and his lawyer quickly established he really had made a big error, with a consumer brand name product line no less. In fact, once he discovered there was a competitor with the same name products out there, he didn’t want the name either because of obvious confusion in the marketplace just as he was starting to build a brand following.

But how do you take product off the shelves nationwide in only ten days, even if you jump into action right away? In his case, like many others, this was impossible.  But what he could do, even without involving a lawyer, was reply with a polite and apologetic letter and explain he was moving as fast as he could. In fact, I think he proved it was quicker to send new packaging around the country to have some of his distributors repack the goods, rather than the delay and heavy shipping costs of sending goods all back to the factory.

Of course, this meant he need a new name for the new packaging. In a hurry. That was legally clean this time. Fortunately he had been thinking of names for successor products, so had some words to work with as potential starting ideas. He sent his top two favorites to me for checking and a professional naming brand opinion. But both failed my immediate availability checks. However, I flipped the words from the two names around and made a new name from the parts. Voila! A great new name. Strong. Legally clear and now in use nationwide.

javalogoIn many other cases, people receive cease and desist letters for names and trademarks that are not directly infringing. It is simply a legal tactic for some of the big guys to protect their property. Years ago, after Sun Microsystems had a lot of success with the Java name for their new computer language, their law firm used to watch for anything that was even closely related to the name Java and send them warning letters. In fact I even met the lawyer heading that up. She just smiled and agreed when I called her on it. But she new lots of small software startups were flocking to the Java language and were enamored by the name and none of them had the money or energy to challenge her letters. So they picked other names. As a corollary to this anecdote, Sun was later challenged on their broad claims on the name, and had to end up settling for more restrictive trademark rights.

Similarly, if you name anything remotely like a food or drink with the prefix Mac, expect to hear from McDonald’s even though you are not in the fast food business.

At another place where I once worked, the sales manager once came flying down the hallway because he had jsut heard one of our big competitors had announced a line of add-on hardware controller boards with almost the exact same names as our bread and butter line of products. Our president said he knew that company’s president and they surely didn’t do it intentionally, but he knew he had to protect his franchise as it were. So rather than calling his lawyer, I drafted a polite but firm letter for my president to sign and send off to them. A few weeks later, at an industry trade show, the two presidents sat down over a cup of coffee and amicably resolved what was a genuine error.

The motto of these stories is: Always, always check properly before naming a new product line. Not every product line need a registered trademark but use a professional checker or lawyer. Else dig very deep yourself. Just because the name does not appear on the first page of Google is irrelevant.

And if you get a cease and desist letter:  Do not panic. Use it as a starting point to start a dialog. But do not run and hide and ignore it.

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