• Attorney Threat Letters, Cease & Desist and Notice Letters Alleging Trademark Infringement: Understand Your Options & Risks.
  • August 17, 2009 | Author: Brian A. Hall
  • Law Firm: Traverse Legal, PLC - Traverse City Office
  • ANNOUNCER:  This program is sponsored by Traverse Legal, PLC, a high tech law firm providing international representation in business, technology, intellectual property, and complex litigation matters.  You can contact Traverse Legal through its website at www.traverselegal.com.  Welcome to the VTAlk Radio Tech Spotlight with your host, John Bentley. 

    JOHN:  Welcome to VTalk Radio's Tech Spotlight.  Today we are in the studio with Brian Hall.  Brian Hall is an attorney with Traverse Legal of Traverse City, Michigan.  Traverse Legal specializes in global trademark protection, anti-cybersquatting actions and business and tech representation.  Brian's practice focuses on trademark matters, intellectual property law, business representation, and general civil litigation.  Welcome to VTalk Radio's Tech Spotlight this morning, Brian.

    BRIAN:  Thanks a lot, John.  Good to be here.

    JOHN:  Well today we are talking about what to do when you receive a trademark threat letter.  What is a trademark threat letter, Brian?

    BRIAN:  Well, a trademark threat letter is basically what it sounds like.  It's a letter or a sometimes an email from an alleged trademark owner whereby they threaten you with legal action if you do not stop using their trademark registration.  And when we're talking about a trademark, as I said on one of the last shows we did, a trademark is a word, symbol or phrase used to identify a particular manufacturer or seller's product and allow them to distinguish themselves from the product or services of another.  So what happens, usually, is you get a letter from someone; usually you're caught off guard by this and the trademark threat letter will start out by noting who sent the letter.  Then it will talk about the trademark itself or the trademark registration that they're claiming to own.  And there will be an explicit reference in there to that registration number.  Then the threat letter will go on to discuss how the trademark owner has used the trademark in commerce in the past.  So if they have a mark, we'll just say McDonalds has a Big Mac mark, if you were using something along those lines, they'll talk about how long they've been using Big Mac at their restaurant, what the registration number is for the Big Mac.  Then they'll go on to discuss how you are using their mark, and they'll probably use words like infringement or dilution, or you know, other trademark threatening language under the Lanham Act that puts you on notice that you're violating some of their rights.  Then it will usually end up with some general language threatening you to cease and desist what you're doing.  And when they say cease and desist that's essentially legal jargon for saying you're doing something wrong in the way we see it and we want you to stop.  They'll give you a date by when they want you to stop using their trademark or doing something that they view as being illegal, and they'll also give you a contact number and some other information.  More and more of what we're seeing, John, is that a lot of these trademark holders will even include and attach an agreement and ask you to sign this agreement and tell us that you're going to stop using the trademark or transfer this domain that is using the trademark registration of ours and we'll leave you alone.  Ultimately it will be signed by an attorney and they'll try to use that as leverage to scare people to signing away rights that they may have.

    JOHN: Now what other things could cause you to get a threat letter?

    BRIAN: It's a difficult question to answer, because you don't always know what's going to trigger someone to send a trademark threat letter.  Usually what happens is if you receive a trademark threat letter you're probably using someone else's trademark, service mark, or the trade name of their business or maybe just a product, service or something that they offer. So what will happen is, we'll go back to the McDonald's example, let's say for example you opened up something that was similar to a McDonald's and you started offering a Big Mic, or something similar to the Big Mac. I'm not sure if we've all seen the Coming to America movie, but the Big Mic was the one mentioned in that movie and most likely in a situation like that the McDonald's Corporation would send a threat letter and say stop using our trademark.  Really what it comes down to is you get that letter and you're supposed to read it and have an understanding of it, but usually you need to contact a trademark attorney to really know what is going to happen, and what you should do next. Other times you get a letter that's saying you're using someone else's trademark in a domain name you might own, and you know, there might be references to cybersquatting, for example.  Sticking with the Big Mac example, if you registered bigmac.com, and you were selling, you know, French fries, hamburgers, etc., anything similar to what McDonald's does, you might get a trademark threat letter.

    JOHN: Well obviously the trademark owner would send you one, but who else would send you a treat letter?

    BRIAN: Really the trademark owner is the main person who would be asserting the right, but a lot of times it's the attorneys on behalf of these individuals, or more often than not, it's corporations. It's major companies who have major intellectual property rights, be it trademarks, copyrights, patents, anything along those lines, and they will send these trademark threat letters, and a lot of times the trademark threat letter is nothing more than a standard letter that they've sent out many times before. They don't change it much for each person they send it to. They make reference to their United States Patent & Trademark Office registration number, or they might simply go ahead and make reference to common law trademark rights they have.  But, more often than not it's a standard letter, they're not putting a lot of time into it, because it's a relatively inexpensive way for them to assert what they believe are their rights to something and, more often than not, people just roll over when they get these letters, get scared, and either stop doing what they're doing which they, you know, legally might be able to continue to do, or turn over something like a domain name that incorporates someone else's trademark.

    JOHN: Now, Brian, what should I do when I receive a threat letter?

    BRIAN: First things first, you should definitely contact an attorney and if possible, contact a trademark attorney; one who has experience in trademark matters, cybersquatting matters, things along those lines.  The attorney's value comes into play by being able to give you your true options. And when we're talking about options once you get a trademark threat letter, it comes down to you can do what they ask, you know, number one they're going to ask you to cease and desist. Either remove that infringing material from ads you're using, take down your website, get rid of the domain incorporating their trademark, things along those lines. Or, it might just be a simple, as the attorney will advise you, you're in trouble, exonerate yourself from all liability and simply transfer the domain or, like I said before, cease and desist use of the trademark. However, more and more what we're seeing is there's many defenses out there, and you can fight back. Once you get a trademark threat letter, it doesn't mean that you have to personally respond and turn over everything that you believe you have rights in. Really a trademark attorney will help you identify possible defenses that are out there, and there's a lot out there. There's a couple that I can mention right off the top of my head like fair use. If you started using a trademark before the person who is trying to assert those rights via a trademark threat letter, you might have rights and have fair use to be able to be able to continue to use it. Another defense would be that you're running a legitimate business that's not going to cause confusion so as to lead to infringement or anything else that they might mention in this trademark threat letter. A perfect example of that is the trademark for Delta. If you think about Delta, you have Delta Airlines, they own a trademark for Delta. You have Delta the faucet manufacturer who owns a trademark for Delta, and you also have others like Delta Dental and some other uses of Delta. Just because you're using a mark that someone else might have a trademark for does not mean that you're violating the law or liable under the Lanham Act or other trademark laws. An attorney will definitely be able to identify that for you. And then finally, more and more what you’re seeing the best way to handle these trademark letters is to simply attack the trademark registration that cited in the trademark threat letter. And, you know, there's a couple ways to do that. One is if the trademark they're referencing is generic, meaning that they don't have any exclusive rights to use it. So if, you know, a company called what they're selling, you know, if they're a car company and they're selling cars, they don't have rights to simply use the name car.  So that's a good way to attack it, and there's a concept out there called "genericide". And what that means is over time if someone continues to use something so much that it becomes common language that someone can lose their trademark rights in it. And a common example of that is the trampoline. Someone came up with the trampoline used it to represent what it was way back when, but now trampoline is commonly known.  So, you know, really that's what’s out there for generic defenses.

    JOHN: Now, what should a person not do, Brian, when they receive a threat letter?

    BRIAN: Well the first thing we do when we get a client or a potential client on the phone talking about a trademark threat letter, we tell them to relax. It doesn't make sense to panic. A lot of times, you know, like I've sort of outlined here today, there's options there. There's defenses there. There's things that come up that make a trademark threat letter not what it might appear at first glance. So, really we would advise people to read the letter and contact the trademark attorney. It doesn't make sense to jump to any conclusions and to feel like your definitely liable.  They're going to make reference in these trademark threat letters about legal exposure, financial exposure, you know, big, scary terms, but when it all boils down, there are options out there. So we tell people don't act before you research and contact a trademark attorney.

    JOHN: Well Brian, this sounds like great advice. We certainly appreciate you joining us on VTalk Radio's Tech Spotlight today. Any thoughts you want to wind this up with?

    BRIAN: Other than the things I said, John, it just really comes down to trademark threat letters are becoming a very common thing that these trademark owners or companies or individuals who believe they have trademark rights are using. Like I said, it's a cheap way for someone to try and get something that they believe they have ownership in, and the most important thing that I can say is make sure you're not parting ways with something that you might have legal rights to. So a trademark threat letter is exactly that. It's a threat and make sure that there is substance behind that threat before you simply just roll over and walk away.

    JOHN: Sounds like great advice, Brian. Thank you so much for joining us today on VTalk Radio's Tech Spotlight.

    BRIAN: Thanks a lot.

    JOHN: We've been in the studio today with Brian Hall, attorney with Traverse Legal, Traverse City, Michigan. You've been listening to VTalk Radio's Tech Spotlight. Thank you for tuning in today, have a great afternoon.

    ANNOUNCER: Today's program is sponsored by Traverse Legal, PLC, a law firm specializing in internet law, domain disputes, and technology company representation. That's Traverse Legal, www.traverselegal.com.

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