Help! I Got a Cease & Desist Letter- Now What?!

When you’ve turned your big idea into a successful nonprofit, few things are a bigger buzzkill than getting a trademark cease and desist letter. This is a letter you get in the mail that informs you (in scary legalese) that you’re infringing on a brand someone else owns. It usually comes from a lawyer, which adds to the stress factor. 

I’m not going to lie- these letters aren’t fun, and dealing with them isn’t always simple. As a nonprofit lawyer, I’ve seen and dealt with enough trademark cease and desist letters to know how you should and shouldn’t respond. So what should you do?

Don’t Ignore a Cease and Desist Letter!

This is the most important step – do NOT ignore that scary letter. I know, I know, it’s human nature to avoid and ignore scary or unknown things. For example, think about getting a HUGE bill in the mail. You see the big number down in the amount due, and you stick it away somewhere until you’re ready to deal with it. That doesn’t stop the interest from piling up, but sometimes it just seems easier to deal with it later. Out of sight, out of mind.

When you ignore a cease and desist letter, it’s just as counterproductive – another one will almost surely follow. So take a deep breath, read it over to make sure you understand why the letter was sent, and get ready to do some homework.

Here’s what you have to do:

  1. Research the Company

First and foremost, we have to figure out who’s claiming we’ve infringed on their trademark.

Look this company up online and see if you can get a good idea of when it was founded. You can usually puzzle out about when they started by looking at their “About Us” page on their website, seeing how far back their social media goes, or even looking them up with their state to see when the business was founded.

The point of all this sleuthing is to see whether the company really can claim prior use of the trademark. For example, say your nonprofit has a program called Save the Snails, and you’ve got a little snail graphic you use on your marketing materials. Now say a new restaurant called Save Room for Snails who sells escargot has a similar-looking snail in their logo. Can they really claim they were using it first?

You should also learn more about exactly who you’re dealing with. Some companies have a reputation for aggressive trademark enforcement. If they’re super-litigious and known for over-interpreting the scope of their trademark rights, you’ll want to know it, and so will your trademark lawyer.

  1. Call a Trademark Lawyer

You’ve resisted the urge to shove the letter in the ‘Never Look At Again’ pile and done some basic homework on the company claiming trademark rights. Now it’s time to call a lawyer- and you do need to call one, as trademark matters aren’t something you want to take on yourself. Put it this way- if they have legal representation, so should you.

Lawyers do cost money, but you can control that cost by carrying out the research I mentioned above and organizing it so that the lawyer can review all of the facts more quickly. Trust me – you’ll save time and money in the long run by engaging a knowledgeable lawyer now, rather than waiting for this to get uglier. 

  1. Identify the Best Resolution

Now you and your lawyer decide on the best way to resolve the situation. 

For argument’s sake, let’s assume that Save Room for Snails is right and you are unintentionally infringing on their trademark. One option is to try working something out with them. Maybe you can get a license to use the mark. This usually involves paying an annual fee, which doesn’t have to be a huge amount. 

Another possible compromise is something called a consent agreement, in which you’re both essentially calling a truce. You agree in writing that your respective marks are not confusingly similar and that one of you will use it in connection with certain products and services in a specific geographic area or marketplace while the other exercises similar rights in a different area. (Here’s what a consent letter looks like.)

Now, if you really did infringe on the restaurant’s mark and they’re not willing to negotiate a compromise with you, the worst-case scenario is that you may have to rebrand. Yeah, it’s a pain and far from pleasant, but sometimes that’s the only way to resolve a trademark dispute. Your lawyer can help you negotiate the terms of how you rebrand. In some cases, you can get the other party to agree to reimburse you for the cost of rebranding.

These options are all better than going to court, which is stressful, time-consuming, and expensive. Act on that cease and desist letter now, so you can set yourself up well for a good solution.

If you would have questions or would like to schedule a consultation, call 612.200.3679 or contact me here

Birken Law Office – Law firm serving nonprofits organizations, and foundations – Birken Law

Birken Law Office – Law firm serving nonprofits organizations, and foundations – Birken Law

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