What is a Trademark Cease and Desist Letter?

A letter on a wooden table – cease and desist

First of all, a trademark refers to a form of intellectual property that contains a recognizable sign, design, or expression which identifies products or services from a specific source. 

A trademark cease and desist letter is a notification that your business would put into action to alert an alleged trademark-infringer that they are creating confusion in the marketplace that your company occupies by their use of a trademark that is way too similar to yours.

This letter expresses the demands and of the trademark holder and the consequences that could occur if the trademark is continually appropriated by this competing company.

If you want to get further in depth about what is a trademark cease and desist letter, you have come to the right place. 

Basics of Trademark Cease and Desist Letters

Practically every trademark enforcement action gets its start with a cease and desist letter. 

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The core purposes of a cease and desist letter include: 

  • Notify the alleged infringer that the trademark holder thinks that trademark infringement is taking place. 
  • Instruct the alleged infringer of the demands that the trademark holder is making. 
  • Secure an early resolution of this situation so that the plaintiff can avoid costly litigation.

Cease and Desist Steps 

What needs to take place before that trademark cease and desist letters ever hits the alleged infringer’s mailbox? The trademark infringement first has to be identified. In order to monitor your trademark for its protection, typically trademark owners will hire trademark attorneys to keep their eyes out on recent developments such as:   

  • Trademark applications that have been published. 
  • Trademark applications that have been recently filed. 
  • Trademark registrations that have been issued by the United States Patent and Trademark Office (USPTO).
  • Domain name registrations.
  • New brand names that are popping up in your industry. 

Hired trademark attorneys will generally provide a bimonthly search report that includes items such as potentially problematic trademark registrations with an analysis of the severity of the situations.

The next step is to determine if the nature of the perceived violations warrant further enforcement measures. If the answer is yes, out comes the trademark cease and desist letter.

Likelihood of Trademark Confusion

Before going all the way with a trademark cease and desist letter, it is extremely important to take an honest look at just how likely it would be that the average consumer of your company’s goods and services could be confused and think this alleged trademark infringer is you.

Some of the general factors that courts may use to determine if a trademark infringement case has any merit to begin with include:  

  • What is the similarity of the trademarks?
  • How strong and distinctive is the trademark?
  • How similar are the goods and/or services of the two companies? 
  • Are both businesses utilizing common trade channels?
  • What is the degree of sophistication of the shared marketplace and consumers?
  • Does the trademark appear to have been used in bad faith?
  • Is there any evidence of actual consumer confusion?

Tarnishing a Trademark

Trademark cease and desist letters can still be sent out even when the trademark attorney determines that there may not be any likelihood of confusion between the two trademarks, but there could still be a level of risk that the competing mark may dilute or tarnish the trademark owner’s brand.

If the trademark holder can demonstrate that their trademark is famous and has been established as a household name, there may be grounds for no one can register that trademark even for unrelated goods and services. 

Don’t stir up a whole heap of legal problems, financial trouble, and time consumption if you haven’t gone through these steps thoroughly prior to issuing a trademark cease and desist letter.