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 your rights

Provide an explanation of the basis for your trademark rights. Trademark rights can be based on use of a mark in connection with goods or services. A trademark registration is helpful but is not required to obtain trademark rights.

Acme Inc. is the owner of the BOSS trademark. Acme has used the mark continuously and exclusively in connection with widgets since at least [first use date]. Acme has advertised and sold widgets in the U.S. through its [channels of trade, e.g. website, retailers, etc…]. Therefore, Acme has established valuable trademark rights. In addition to its common law trademark rights, Acme is the owner of U.S. Trademark Registration No. __________ for the mark BOSS.

4. Introduce the wrongful conduct

Explain the activities of the recipient that violate your trademark rights.

Beta is engaged in the sale of widgets having the BOSSES mark at [locations of sale, e.g. website, retail, etc]. This activity infringes Acme’s trademark rights.

5. Explain the applicable law

Explain the trademark law that is applicable to your situation.

Trademark law prohibits parties from using a trademark in a manner that is likely to create confusion in the market place as to the source of the goods provided in connection with the trademark. Whether there is a likelihood of confusion depends on several factors including the similarities of the marks and the similarities of the good/services.

6. Explain how the law applies

Explain how the trademark law applies to your situation.

Here, comparing the marks, BOSSES is very similar to BOSS. Each mark contains the common root word BOSS, which provides a similarity of sound, meaning, and appearance. Your mark merely provides a plural of Acme’s BOSS mark. Therefore, the marks are similar.

Turning to the goods, your widgets are ________ type widgets, which are the same type of widget sold by Acme under its BOSS trademark. Further, your widgets are sold to the same type of customers and are useable in the same type of applications as the Acme widgets sold under the BOSS mark.

As a result, your use of BOSSES in connection with the sale of widgets is likely to cause confusion with Acme’s trademark BOSS in the marketplace.

7. Explain the possible consequences

You can also explain the consequences of trademark infringement.

Trademark law and common law provide protection for trademark owners. Some of the remedies available to trademark owners against trademark infringers include enjoining the infringer from using the trademark, impounding and destroying goods bearing the trademark, recovery of the infringer’s profits, and an award of attorney’s fees.

8. State Your Demand(s)

List your demand or demands.

Therefore, Acme demands that Beta take the following steps by [deadline]: (1) stop using the mark BOSSES and any similar mark in the marketing and sale of widgets; (2) recall and destroy all advertising, products, labels, packaging, stationary, and other materials having the BOSSES mark, (3) turnover control of any domain names having the BOSSES mark to us, etc…

9. Reservation

A reservation of rights statement can be included stating that Acme reserves all of its rights, none of which is waived by the letter.

Cautions

The above are possible parts of a cease and desist letter. Lawyers often receive requests for “forms.” However, forms, if they are any good at all, are only a starting place and most often need modification to fit a particular circumstance. Therefore, the example excerpts might not be appropriate for your circumstance.

Further, it might be that you should not send a cease and desist letter at all. Generally, trademark law awards rights based on priority–that is, who was first. If you send a cease and desist letter to someone that started using their mark before you started using your mark, you could be in trouble. If the recipient was first, he/she/it could be a senior user that could turn around and sue you for infringing their mark. And your letter could be used as an admission of infringement. Therefore, it is critical to determine whether you have priority over the target of your letter before any letter is sent. But examining all the details of priority is outside the scope of this post.

Moreover, the recipient of your letter could use it to gain “home court advantage” by filing a declaratory judgement lawsuit against you in their home state or district. Many courts can only decide cases and controversies. And your threatening cease and desist letter will create a controversy that the target of the letter could use to start a lawsuit in their preferred court asking the court to declare that they do not infringe your mark. Therefore, when sending a cease and desist letter, you must consider the risk that the target could file a lawsuit based on the letter in a court that is far from you or otherwise disadvantageous.

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 mark than was necessary, and (3) the use did not falsely suggest the defendant was sponsored or endorsed by the trademark owner.

As just explained on the first factor, the Trabris’ could not let customers know the type of vehicles that they broker without using the Lexus mark.

Regarding the second factor, at the time of trial the Trabris’ did not use the Lexus logo, font, or distinctive styling on the websites. Therefore, when they used the plan text “lexus” in the domain name and on the website they were using no more of the mark than was necessary.

Third, the contextual use of Lexus in the domain name did not make a false suggestion of endorsement. The court stated:

Because the official Lexus site is almost certain to be found at lexus.com (as, in fact, it is), it’s far less likely to be found at other sites containing the word Lexus.

On the other hand, a number of sites make nominative use of trademarks in their domains but are not sponsored or endorsed by the trademark holder…

Consumers who use the internet for shopping are generally quite sophisticated about such matters and won’t be fooled into thinking that the prestigious German car manufacturer sells boots at mercedesboots.com, or homes at mercedeshomes.com, or that comcastsucks.org is sponsored or endorsed by the TV cable company just because the string of letters making up its trademark appears in the domain.

The court further dismissed the argument that consumers would be confused before encountering the Tabris’ disclaimer used on the site, which provided “We are not an authorized Lexus dealer or affiliated in any way with Lexus. We are an Independent Auto Broker.” The court stated:

But nothing about the Tabaris’ domains would give rise to such confusion; the Tabaris did not run their business at lexus.com, and their domain names did not contain words like “authorized” or “official.” Reasonable consumers would arrive at the Tabaris’ site agnostic as to what they would find. Once there, they would immediately see the disclaimer and would promptly be disabused of any notion that the Tabaris’ website is sponsored by Toyota.

Therefore the court noted that when a customer arrives at a website with a trademark plus additional terms (except for words that imply a sponsorship or endorsement) in the domain name, the customer will be agnostic as to whether the website is authorized by the trademark holder or not. The customer will consider the content of the website to determine whether it is authorized by the trademark holder or not.

Responding to a Cease and Desist Letter

If you are using a mark to refer to the genuine product carrying the mark, then you might be able to assert the nominative fair use defense.

You will have a better chance of succeeding with a nominative fair use defense if you (1) do not use the trademark holder’s logo, distinctive style, or font when using the trademark, and (2) do not use any words such as “authorized,” “official,” or similar words that could indicate a sponsorship or endorsement by the trademark owner.

The court stated that a defendant is not required to use a disclaimer in order to win with a fair use defense. But, a disclaimer will strengthen the defense.

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, 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. Both companies sold to some of the same customers.

Sophisticated Purchasers and Expensive Services

The chance of conflict (i.e. “a likelihood of confusion”) between two trademarks is reduced where the goods/services are expensive and purchased after careful consideration. Sophisticated consumers may be expected to exercise greater care in making purchasing decisions.

When a purchaser exercises greater care in making purchasing decisions it is more likely the purchaser will notice differences between the respective marks, the respective goods/services, and the respective sources of those goods/services. Therefore it is less likely the purchaser will be confused to believe that the goods/services of one company originate from the other company.

In this case, Electronic Data’s computer services are “expensive and are purchased only by experienced corporate officials after significant study and contractual negotiation.” When a customer is making an expensive purchase after a contractual negotiation, it is very likely the customer will know the service provider negotiating the contract. Therefore, the purchaser is less likely to be confused as to the source of those services.

Likewise, evidence showed that the evaluation process used in selecting Electronic Design’s battery and power products by customers required significant knowledge and scrutiny.

In this case conflict was avoided, in part, because the parties’ goods/services were usually purchased after careful consideration by persons who were highly knowledgeable about the goods or services and their source.

Responding to a Trademark Cease and Desist Letter

When both parties’ customers are sophisticated purchasers the chance of confusion as to the source of the parties’ goods/services is reduced. Therefore the chance of a conflict between the marks is reduced. Further, when the goods/services are expensive, customers are more likely to take greater care in making purchasing decisions.

When your goods and the plaintiff’s goods are expensive and/or purchased by sophisticated customers, you have a better chance of defending against claims of trademark infringement.

See other posts in this How to Respond to a Trademark Cease and Desist series:

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 to some of the same large companies.

Different Channels of Trade and Purchasers

If a conflict (a.k.a. “a likelihood of confusion”) between marks exists, it must be based on the confusion of some “relevant person;” i.e., a customer or purchaser.

Both companies sold to General Motors and Sears. But simply selling to the same large companies was not enough. Individual departments in larger companies may be independent in their purchasing activities.

The court stated: “There is no evidence here, for example, that those computer specialists in the administrative departments at General Motors responsible for purchasing computer services are also responsible for purchasing battery chargers for the auto parts and services departments.”

The overlap in medical sales was even more of a stretch. Electronic Data supplied data processing services for medical insurers.  Electronic Design sold batteries and power supplies to makers of medical equipment such as bedside alert systems and crib monitors.

The court noted that Electronic Data “offers no reason to infer, for example, that Blue Cross officials responsible for purchasing its computer services might decide to discontinue purchasing from opposer because of confusion by a secretary in a physician’s office who mistakenly attributes the malfunction [of Electronic Design devises] to [Electronic Data], even though the secretary will process patients’ claims to Blue Cross.”

The medical secretary is not the “relevant person” for trademark conflict purposes. It is not always enough to look at common corporate customers as a whole, you must look at the purchaser within the corporation to identify an overlap.

For commercially sold items, users of the Electronic Design devices would only be “relevant persons” if those users could influence future purchases. And evidence of that was lacking in this case.

As a result the court found  that “although the two parties conduct business not only in the same fields but also with some of the same companies, the mere purchase of the goods and services of both parties by the same institution does not, by itself, establish similarity of trade channels or overlap of customers.”

Responding to Trademark Cease and Desist Letter

When considering whether marks are in conflict, you should consider the channels of trade in which the products/services are marketed and sold.

If the channels of trade are sufficiently different and the the relevant persons (e.g. purchasers) are not likely to encounter the plaintiff’s mark and your mark , then the marks might not be found in conflict.

Sales to the same large corporations alone is not enough. The relevant overlap is whether the same purchasers (or possibly users that can influence purchasers) will encounter both the plaintiff’s mark  and your mark.

Therefore, marketing and sales in different places to different groups of purchasers can be one factor in your favor in defending against claims of trademark infringement.

Another factor supporting no conflict conclusion in this case was that the purchasers of both companies goods were sophisticated. I will cover this topic in a future post.

See other posts in this How to Respond to a Trademark Cease and Desist series:

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 its brewpub in Merced, California, which is about 80 miles from Yosemite National Park.

A nickname for a geographic location is equivalent to official name for purposes of determining registrability of the geographic term. It did not matter that Yosemite was not a city name or  county name.

The Trademark Board found that Yosemite is a well recognized and frequently used shorthand reference for Yosemite National Park and the Yosemite region in general. Therefore, the purchasing public would be likely to believe that the beer originates in the place (Yosemite) named in the mark.

The addition of “beer” to “Yosemite” did not save the application because “beer” was weak as being a descriptive or generic term.

Responding to a Trademark Cease and Desist Letter

When evaluating the strength of the Plaintiff’s trademark, you should consider whether it is primarily geographically descriptive. That is, is the mark primarily descriptive of a geographic location?

If so, the plaintiff’s trademark may be weak and the protection afforded to it may be weak or non-existent. If the plaintiff can’t protect its mark because its primarily geographically descriptive, then the plaintiff might not be able to stop your trademark use.

The Exceptions

However, if over time customers begin to recognize a geographically descriptive mark as a source of goods/services, that mark can gain trademark protection (through acquired distinctiveness or secondary meaning). TMEP 1210.07(b).

Therefore, if the plaintiff’s mark has been long used for its goods/services and/or has otherwise become recognized in the marketplace, making claims that the mark is weak as primarily geographically descriptive may not be an effective defense.

Picking a Strong Trademark

If you are at the point of picking a trademark for your business, product, or service, you want to select a strong mark that is not primarily geographically descriptive.

See other posts in this How to Respond to a Trademark Cease and Desist series:

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 are so different from shoes that consumers would not expect a source of underwear to also be a source of shoes?

No. The Trademark Trial and Appeals Board noted several previous cases where a conflict was found when the same or similar marks were used by different parties in connection with shoes and with items of clothing.

The one of the  reasons the Board found no conflict was that the marks had different meanings in the context of the respective goods. On that point the Board said:

“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.

Nicely put.

The Board described this a “close case.” Yet, the differing meanings played an important roll in the result.

But, in other cases a conflict was found where there was a lack of meaning-contextual difference. For example, a conflict was found between two users of INGENUE, one for shoes and the other for women’s undergarments. General Shoe Corp. v. Hollywood-Maxwell Co., 47 C.C.P.A. 933 (CCPA 1960).

Responding to a Trademark Cease and Desist

Therefore, when considering the similarities of the marks in response to a trademark cease and desist letter, you should consider whether the marks have distinctly different meanings in relation to the goods/services that they are used on.

Different meanings will not always save you from a conflict as noted by the fact that the Board called the Players case a close case,  but it is one area worth investigating that could be successful.

See other posts in this How to Respond to a Trademark Cease and Desist series:

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 marks do not avoid a conflict. However, here many third parties used “city” and “bank” for financial services. In another case, a court noted evidence of 20 other banks that used City and Bank. So, the Citigroup’s right to stop the use of phonically equivalent words was cut off by preexisting third party uses.

Also, Citigroup admitted in a Ohio trademark filing that “because `City’ is a commonly used prefix for financial services corporations, Citigroup and its many subdivisions that bear the famous CITI prefix have coexisted with many`City’ entities for years in virtually every jurisdiction.”

Not a good admission for Citigroup. You can’t, on one hand, say that the use of “city bank” in “Capital City Bank” is confusing while at the same time saying that you have long coexisted with other using “city” for financial services business.

Therefore in this case the “i” vs. the “y” spelling made a difference. Yet many times it will not. Like in the case where the refusal to register XCEED was upheld based on the phonically equivalent preexisting registered mark X-SEED used on the same goods. In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012).

Back to the Citigroup case, the phrase “Capital Bank” was found to be the dominate part of Capital City Bank’s mark given the weak nature of Citigroup’s mark.

Defending Against A Trademark Cease and Desist Letter

What can we learn from the Citigroup case? We learn that sometimes marks that at first glance appear to be similar, are not similar for trademark infringement purposes. If many third parties had not been using “city bank” for financial services, Citigroup might have prevailed.

When the overlapping terms between the marks are commonly used in the industry, the marks might not be found to be similar for trademark infringement purposes. When marks are considered dissimilar, you have a better chance of defending against a trademark infringement claim.

See other posts in this How to Respond to a Trademark Cease and Desist series:

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 (Fed. Cir. 1990).

Descriptive Marks are Not Strong Initially

Not all trademarks are created with equal strength.

Descriptive marks are weak, at least initially. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

The court found that Tower’s mark was essentially the generic term “portfolio valuation system” with the addition of the word “professional.” The term “portfolio system” described what the Tower’s software was used for, e.g. to manage a portfolio. The absence of the term “valuation” from the mark did not prevent Tower’s mark from being descriptive.

And the word “professional” conveyed information immediately to the purchaser that the product possesses professional capabilities. Therefore, the mark described directly characteristics and features of the product.

The court found that Tower’s did not have superior rights in the mark even though Towers’ used his mark first.

Over time a trademark owner might be able to generate trademark rights in a descriptive mark, if the mark gains recognition (i.e. acquired distinctiveness or secondary meaning) with the purchasing public. But Towers did not show this.

Responding to a Cease and Desist: Your Mark Is Descriptive

Therefore, if a plaintiff demands you stop using your mark, and that plaintiff started using the mark before you, you might be able to defend by asserting that the plaintiff’s mark is descriptive and therefore weak.

Evaluating whether the mark is descriptive involves understanding the goods or services that the mark is used on, and comparing the elements of the mark to those goods or services to see if the elements of the mark describe an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services.

It also involves determining how long the plaintiff has used its mark and whether the mark has gained recognition with the purchasing public as a source of the plaintiff’s goods/services.

See other posts in this How to Respond to a Trademark Cease and Desist series:

Photo credit to Elliott Brown under this creative commons license. The photo was modified from the original to crop in on “weak bridge.”

 

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 because many other companies used Domino on other types of food.

I previously discuss factors to consider for selecting a strong trademark. Another factor in trademark strength is whether many others are using the same or similar mark in the marketplace for the same or similar goods or services. When many third parties are using the mark on similar goods, that mark will be considered a weak mark. Weak marks are provided a narrow scope of protection.

In the case of Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 259 (5th Cir. 1980), Domino’s Pizza showed that there were 72 other trademark registrations of the term “Domino” at the U.S. Patent and Trademark Office. Some of those registration involved foods, such as canned fruits, cheese, wheat flour, canned sardines, and candy. Domino’s Pizza also introduced evidence of 15 uses of marks that included “Dominos” in the marketplace by other companies, including uses related to food and grocery stores.

The court noted that “The greater the number of identical or more or less similar trade-marks already in use on different kinds of goods, the less is the likelihood of confusion….” The court also stated, “The third-party uses and registrations discussed above merely limit the protection to be accorded plaintiff’s mark outside the uses [sugar] to which plaintiff has already put its mark.”

Therefore Amstar’s trademark rights to Domino did not extend to any food but was confined to sugars. The court concluded limited strength and protection outside of its sugar goods was an important factor in determining that Domino’s Pizza’s use of the term “Domino” did not constitute trademark infringement.

Responding to Trademark Cease and Desist: Search for Third Party Uses 

Therefore, when you are on the receiving side of a trademark cease and desist letter, you should be searching to see if there are other similar registered marks used for similar goods. You can do that by searching the USPTO trademark database. You should also search for third party uses in the marketplace of the same or similar marks for the same or similar goods. You can do that by any method of searching the market, e.g. search the internet.

The more third party uses the better. But, you don’t need to find 72 registrations, even a handful can be effective depending on the circumstance.

Finding that multiple third parties have registrations or uses in the marketplace for the same or similar mark with the same or similar goods, may be a basis to assert that the plaintiff’s trademark rights are weak. If the trademark rights are weak, it may be that the differences in the goods/services are sufficient to conclude there is no trademark infringement, as was the case for Domino’s Pizza.

See the prior posts in this series:

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 Group v. Serv. Performance Group, Inc., 753 F. Supp. 2d 541 (E.D. NC 2010). The court there stated the rule that it is not registration of the mark, but the “actually use of the designation as a mark that creates rights….Neither application for, nor registration of, a mark at the federal level wipes out the prior non registered, common law rights of others.” McCarthy on Trademarks 16:1 (citing Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427 (7th Cir. 1999)).

The “I Was First” Defense

If you receive a cease and desist letter claiming trademark infringement, one basis to defend is that you used the mark before the plaintiff used the mark.

Priority of use provides that the party that first starts using the mark usually wins. Priority can be established by actually use or by filing an intent-to-use trademark application (constructive use).

So if you started using the mark before the plaintiff, then the plaintiff may not have the right to stop you from continuing to use the mark in your geographic area.

However, if you have not applied to register your mark and the plaintiff has, the plaintiff may not stop you from using the mark in your geographic area, but your right to expand sales geographically may be limited.

Investigating Priority

How do you know what date Plaintiffs cease and desist letter may state the date that the Plaintiff first started using the mark? If the Plaintiff has a federal registration, the federal registration will provide a first use date. If the plaintiff’s federal registration resulted from an intent-to-use application you will look to see the filing date of the application as the constructive first use date.

You can also look for general evidence of use by date. For example, you can search the Internet Archive to see if the Plaintiff’s website on a certain date shows a use of the trademark. If the Plaintiff has a Facebook page, you can view the Facebook page to find posts having the mark and look to the date of the post (but the user can modify the date of a post).

The Plaintiff’s lack of priority of use, or “I started using the mark before you,” is one way to defend against claims of trademark infringement.