Trademark Protection – Cease and Desist

In America, a lot of successful companies like Apple, Disney, Google and Microsoft invest time and money into trademark protection.  However, trademark protection is not limited to large companies, many smaller companies including sports teams and universities also invest in trademark protection.  In some cases, they have whole departments in charge of brand management where they go out and look for use by others of their trademark or brand.  Why do these companies and universities spend so much time and money policing their trademark?

A trademark can represent real money to companies, teams and colleges.  A trademark represents a companies goodwill and is associated with a companies brand.  Successful companies invest in their brand to engage and build customer recognition.  Customers who associate a brand with a product or service are more likely to make purchasing  decisions based on the brand recognition.  To help customers easily recognize the brand, companies use trademarks and logos on their products.  In addition, some of these companies and colleges license the use of their brand to others.  For example, most NCAA college sports teams require that you obtain a license before selling branded apparel or products bearing their logo.  Why?  If a company or college does not protect its brand they risk loosing their brand.  You’ve heard the phrase “use it or lose it,” with a brand or trademark its– “protect it or lose is.” Therefore, many colleges and companies actively monitor trademark use by others and when the find use which is problematic, they actively take steps to stop it.

Thousands of trademark lawsuits are filed each year because someone uses someone else’ trademark.  In fact, in the past ten years, over forty thousand trademark cases have been filed to stop someone from using a particular trademark or logo.  Each case can involve hiring a trademark attorney and paying a settlement fee.  The cost for each trademark lawsuit can be very expensive and it represents a large investment, monetarily, emotionally and it can take a long time.  Weighed against the cost of the filing a trademark lawsuit, the failure to file a trademark lawsuit may cause a business or university to lose its trademark.  The cease and desist letter is a good first step to resolve any dispute between the parties prior to paying for the cost of litigation.

A trademark owner has an obligation to police and enforce a trademark which may include preventing someone from causing consumer confusion and this may include filing a lawsuit and seeking an injunction.  Typically, a trademark owner begins protection of their trademark with a trademark registration.   After a trademark has been registered, the next step to protecting a trademark is to send a cease and desist letter.

A cease and desist letter asks someone to stop using a brand, trademark or logo.  These Cease and Desist letters can ask someone to stop using the mark.  In other cases, the party may make a list of demands related to the use, such as to stop using the mark and destroy specific items. Sometimes, the brand owner demands an accounting and monetary payment in exchange for resolving the matter without a lawsuit.   There is no obligation to send a Cease and Desist letter, but if one is sent, the receiving party should carefully consider their options and respond accordingly.  Seeking a lawyer would be a good start.

If you are interested in discussing your options related to sending or receiving a trademark letter, please contact our office and schedule an appointment with one of our trademark attorneys.

 

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