Tag Archives | cease and desist

Components of a Trademark Cease and Desist Letter

At its most basic, a trademark cease and desist letter explains the what and why of the wrongful conduct and requests that it stop. Below provides a more detailed explanation of some components that may go into a cease and desist letter, depending on the circumstances.

1.  Who is this?

Simply explain who you are. For example, “I’m the president of Acme, Inc.”

2. Tell them what you want

Provide a brief one or two sentence summary of the issue and what you want. For example, “I am writing regarding Beta Inc.’s use of the word “BOSSES” in connection with the sale of widgets. As this use infringes Acme’s trademark rights, Acme demands that you immediately stop all use of BOSSES in connection with the sale of widgets.”

3. Explain

Continue Reading

My Use is Fair: Responding to Trademark Cease and Desist

FairUseFarzad and Lias Tabris were auto brokers. They operated websites at buy-a-lexus.com and buyorleaselexus.com connecting buyers with dealers selling Lexus vehicles.

Toyota, which owns the Lexus brand, sued the Tabris’ for trademark infringement, but lost.

Toyota lost because the Trabris’ use was a “fair use” in the case of Toyota Motor Sales, USA, Inc. v. Tabari, 610 F. 3d 1171 (9th Cir. 2010)

When Trabris’ used the Lexus trademark they were referring to actual Lexus vehicles. If they didn’t use the term “Lexus,” how could they let customers know the type of vehicles that they broker?

Nominative Fair Use Defense

A defendant may succeed with a nominative fair use defense if: (1) the product is not readily identifiable without using the trademark, (2) the defendant used no more of the …

Continue Reading

Sophisticated Purchasers and Expensive Services: Responding to Trademark Cease and Desist

ChannelsOfTradeIn my last post, I discussed the case of EDS versus EDS. In that case, one company that used the EDS mark opposed another company’s registration of the mark EDS. Identical trademarks. Sales to the same customers. But no conflict.

One reason for the result was that goods/services provided by the respective companies were sold in different channels of trade to different purchasers.

Another reason–the focus of this post–is that the customers that purchased the goods/services of each company were sophisticated purchasers.

First, a quick recap of parties and their products/services. Electronic Design & Sales, Inc. (“Electronic Design”) filed an application to register the mark E.D.S. for power supplies or battery chargers.Electronic Data System Corp. (“Electronic Data”) opposed Electronic Design’s trademark application for E.D.S in Electronic Design & Sales,

Continue Reading

Different Channels of Trade: Responding to Trademark Cease and Desist

ChannelsOfTradeEDS versus EDS. One company that used the EDS mark opposed another company’s registration of the mark EDS. Identical trademarks. Sales to the same customers. But no conflict. How?

One reason the marks were not found in conflict was that the goods/services provided by the respective companies were sold in different channels of trade to different purchasers.

Here’s the story.

Electronic Design & Sales, Inc. (“Electronic Design”) filed an application to register the mark E.D.S. for power supplies or battery chargers.

Electronic Data System Corp. (“Electronic Data”) opposed Electronic Design’s trademark application for E.D.S in Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713 (Fed. Cir. 1992). Electronic Data used the mark EDS for the sale of computer programming and installation services. But, both companies sold …

Continue Reading

Trademark is Geographically Descriptive: Responding to Trademark Cease and Desist

PrimarilyGeographicallyDescriptiveTrademark_YosemiteBeerSpirits of New Merced (“Spirits”) applied to register the trademark YOSEMITE BEER for the sale of beer. But the US Patent and Trademark Office (USPTO) refused to register the mark.

The USPTO refused to register the mark because it was primarily geographically descriptive in In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007).

A trademark is considered primarily geographically descriptive when (1) the mark’s primary significance is a generally known geographic location; (2) the goods or services originate in the place identified in the mark, and (3) that the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark. TMEP 1210.

Spirits made and sold beer in …

Continue Reading

Trademarks Have Different Meanings: Responding to a Trademark Cease and Desist

“‘PLAYERS’ for shoes implies a fit, style, color and durability adapted to outdoor activities. ‘PLAYERS’ for men’s underwear implies something else, primarily indoors in nature.” – Trademark Trial and Appeals Board.

PlayersTrademarkBritish Bulldog Ltd. applied to register the trademark PLAYERS on the goods of men’s underwear. The trademark examiner  refused to register the mark claiming that it conflicted with a previously registered mark PLAYERS for the goods of shoes.

But the appeals board overturned the refusal and found that there was no likelihood of confusion between the marks in the case of In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (TTAB 1980).

How could identical marks not be in conflict when used on items that a person wears, e.g. underwear and shoes?

Was it because the goods of underwear …

Continue Reading

Trademarks Sound Similar: Responding to a Trademark Cease and Desist

TrademarkSimilar_CapitalCityBank_CitibankCapital City Bank filed a trademark application on its name “Capital City Bank” for banking services without a logo or special form claim. Citigroup filed an opposition based on its Citibank trademarks. Citibank presented evidence that the Citibank brand was one of the most valuable brands in the world. But, Citigroup lost.

When there was a clear over lap of “City Bank” and “CitiBank” between the marks, how could one of the most valuable brands loose?

The problem was that the court concluded that the marks were not similar for trademark infringement purposes.

Not similar? Not similar enough in Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344 (Fed. Cir. 2011).

Sometimes Slight Spelling Differences Matter, Many Times They Don’t

Many times slight spelling differences between …

Continue Reading

The Trademark is Descriptive: How to Respond to a Trademark Cease and Desist

Descriptive_Weak_TrademarkFrederic Towers began using the term “The Professional Portfolio System” in November 1982 for a computer-based portfolio valuation system.

Advent Software obtained a registration for the term “The Professional Portfolio” for computer programs used in the field of financial management. Advent first used the term in December 1983, more than one year after Towers’ first use.

Towers petitioned to cancel Advent’s trademark based on the similarities of the marks and the similarities of the goods, but lost.

Usually rights to use a mark go to the person or entity that first started using the mark in commerce. Here, Towers was first.

So why did he lose?

Because Towers’ mark was descriptive and therefore weak. This is the result in the case of Towers v. Advent Software, Inc., 913 F.2d 942 …

Continue Reading

The Trademark is Weak: How to Respond to Trademark Cease and Desist

Domino_v_DominosPizzaDomino is a trademark for and a brand of sugar. Sugar is a type of food. Domino’s Pizza is a trademark for a pizza restaurant chain. Pizza is a food.

Amstar, which owned the Domino sugar brand at the time, sued Domino’s Pizza alleging trademark infringement over the use of the term Dominos. But Amstar lost.

Why? Similarity of the marks and similarity of the goods is usually a good start to making a strong case of trademark infringement. Here, there was a similarity between the marks, e.g. “Domino.” And, there was an arguably similarity between the goods, e.g. food.

Yet, Amster lost because, in part, the Domino mark was weak in relation to food generally.

Many Third-Party Uses for Similar Goods: Weak Trademark Rights 

Why was the “Domino” mark weak? It was weak …

Continue Reading

Responding to Trademark Cease & Desist: Priority – The I Was First Defense

TrademarkPriorityDaniel Group obtained a federal registration on service mark “ServicePerformance.” But Daniel Group failed when it demanded and then sued claiming trademark infringement to stop Service Performance Group from using that name for similar services. Why did it fail?

Because the Daniel Group was not first to use the words “Service Performance” in business for its services. Service Performance Group began using its name 9 years before Daniel Group received its federal trademark registration.

Daniel Group did not have “priority of use.” So its trademark claim failed even though it had a federal registration and Service Performance Group did not (the space vs. no space between Service and Performance had no impact in this case).

A federal trademark registration is not bullet proof against prior users. This is the case of Daniel

Continue Reading

Powered by WordPress. Designed by Woo Themes