San Diego Business Lawyer Blog
Cease and desist letters claiming trademark infringement have an intimidating effect on their recipients. Most San Diego business owners are bewildered and have no idea how to respond. They have been in business for months if not years, and have constructed signs, circulated business cards, advertising and other promotional materials, published websites, formed a corporation and built goodwill and customer loyalty all under their existing name. Now some company they have never heard of is telling them they need to abandon their identity and start all over, a costly endeavor. Ideally, businesses will conduct a trademark search before deciding on the use of a name and logo and then file their own trademark registration, but this is of course hindsight. There are two very important things to keep in mind upon receipt of a cease and desist letter claiming trademark infringement: don’t panic and don’t ignore it.
Don’t panic because in many cases the issues can be resolved without having to abandon your business’ identity. Your mark may not actually infringe on the claimant’s mark, you may have a common law trademark giving you the right to use the mark in your geographical area, or the claimant may be willing to license use of the mark, place some limited restrictions on use or request some reasonable modifications to the mark. Remember that pursuing trademark infringement claims is an expensive endeavor and it is often economical for the claimant to work out an agreement with alleged infringers. Usually, a San Diego trademark attorney can assist in resolving the dispute for a reasonable cost. Of course, in some circumstances the claimant will not walk away so easily. It depends on the size of the claimant’s business, the strength and recognition of the claimant’s mark and the geographical scope of the claimant’s customer base. A business won’t get very far opening a hamburger joint called McDonald’s and utilizing a big yellow “M” at the forefront of its logo’s design. McDonald’s will pursue a trademark infringement claim no matter the expense.
Don’t ignore it because some companies will pursue their claims even if they are not as big as McDonald’s. Once a trademark infringement claim is filed in Federal court, you lose significant bargaining power. Even if you capitulate and agree to change your business’ name, the claimant will almost certainly want to be recuperated for bringing the action including attorney’s fees and other costs associated with filing suit. With or without an attorney, open the lines of communication.
If you do need a federal trademark, the process is relatively straight forward but can be challenging for the lay person. The first step is to be sure that someone else hasn’t already trademarked the name. This does not necessarily mean that your trademark cannot include the same words as other trademarks. The question is whether your trademark is similar enough to an existing trademark for a similar product or service such that it creates a likelihood of confusion to the consumer. Registering a trademark without an attorney requires some research to better understand this concept and evaluate your trademark against existing registrations. The actual search for existing trademarks is simple enough and can be conducted on the United States Patent and Trademark Office (