What should I do if I receive a cease and desist letter? Am I liable for trademark infringement? Am I liable for copyright infringement? Do I have to change my trademark?

After receiving a cease and desist letter, you will likely want to consider the following.  

Did the other party wait too long to enforce their rights?

Laches is an equitable defense, that can be asserted when one party unreasonably delays moving forward with a legal claim.

A defense of laches to an infringement claim is based on:

• The timing of when the opposing party knew or should have known of your use of the trademarked or copyrighted content and when they chose to take action against it.
• Whether any unreasonable delay resulted in an undue hardship on you. For example, you invested significant resources behind your trademark.

are the trademarks at issue descriptive or generic?

It is not uncommon for someone with a trademark that is not even eligible to be registered, to claim their trademark is being infringed upon. Don't fall for this.

• Is your trademark or the opposing side's trademark descriptive?
  • If so, has the trademark acquired the required level of distinctiveness to be allowed federal registration?
  • For more information on registering descriptive trademarks, see The Path To Registering a Descriptive Trademark- A Risky Road
• Are others using the trademark at issue on similar goods or services, thereby weakening its protection or making the trademark generic?

WHO HAS ESTABLISHED PRIORITY OF USE FOR THE TRADEMARK?

Don’t just give up because you did not file a federal trademark application. Common law rights that are established by actual use of a trademark can be just as strong.

• Typically the first party to file an intent to use application or to use the trademark in interstate commerce is viewed as having priority.
  • This does not, however, mean that they have all rights to the trademark or any ability to force you to change your trademark.
• It may turn out that you are not infringing at all and the party claiming infringement is actually infringing themselves.

is this a case of trademark or copyright infringement?

Just because someone accuses you of trademark or copyright infringement does not mean you are actually liable for either.

• Are the trademarks similar in nature?
• Do you have a valid defense of fair use to a claim of copyright infringement?

Take Note of Any Mistakes You May Have Made

It is important to understand why you may have received a cease and desist letter.

• Did you or an attorney conduct a comprehensive trademark clearance search prior to using a name, logo, or slogan?
• Did you use content that was not your own without conducting a copyright search and seeking proper permissions?
• Did you register your trademarks and copyrights to put others on notice of your ownership and legal rights?

Careful consideration of the above factors can help you navigate the often confusing waters that you are likely to encounter when dealing with a potential case of trademark or copyright infringement.