Steps To Take If You Receive A Trademark Infringement Letter

Trademarks are essential to protect a business, its intellectual property, and its branding. Solid trademarks help set businesses apart from their competitors and avoid confusion in the marketplace. Trademarks are protected by the law. If a business believes someone is using their unique trademark, they may send a trademark infringement letter. The infringing party may face several repercussions, including an injunction from a court that orders them to stop using the infringing mark, as well as having to hand over their profits to the owner of the mark.

An alleged owner of a trademark sends an infringement letter to another person or entity that they believe is violating on its trademark. The alleged owner claims that the recipient of the letter is using a registered trademark or a similar mark that belongs to the owner. The letter states or suggests that the recipient is infringing the trademark and demands that they stop doing so. The letter also usually threatens litigation if the recipient does not stop. 

Receiving a  letter does not necessarily mean you are being sued or will be sued. It also is not enforceable, meaning that the court cannot simply order you to stop using a mark simply because the alleged owner sends the letter. To initiate court action, the sender must typically file a complaint and serve you with a summons. However, a trademark infringement letter is a formal request that you stop using a particular mark.

Someone may send a trademark infringement letter for the following reasons:

• To notify the recipient that they are using their trademark
• To order the recipient to stop using the trademark 
• To establish evidence that they notified you of infringement

However, sometimes owners may notify of the infringement in error when someone is not really using their mark or when they have not registered the mark. Therefore, businesses may wish to seek legal counsel to evaluate their options after receiving a trademark infringement letter.

If a court determines that a party has infringed on another’s trademark rights, they may order:

• The party to stop using or selling goods with the trademark 
• Compensate the owner for their monetary losses
• To hand over goods that used the unauthorized trademark

While each trademark infringement letter is unique, look closely at the following components:  

Identification of Infringing Party

The letter will be addressed to the person or entity who is alleged to have infringed the trademark. It will also include that party’s address. The letter will often be sent via certified mail return receipt requested so that the sender has proof the party received the letter.

Information About the Trademark 

The letter will also indicate what trademark has been infringed. This may include the following information about the trademark:

• The name of the trademark 

• The registration number of the trademark from the United States Patent and Trademark Office

• The date the trademark was first used

• The trademark’s registration date

• The jurisdictions where the trademark is used

Details About the Alleged Infringement

The letter should also state how the recipient has alleged infringed the trademark. For example, the sender may include a copy of a website that uses the same or a similar mark of their trademark. The letter may also indicate that the use confuses consumers and how. 

Timeframe to Stop Using the Trademark

Some trademark infringement letters give a certain amount of time for the recipient to stop the infringing activity. 

Possible Action 

The letter may also state what type of action the sender plans to take if the infringement does not stop within the designated timeframe, such as pursuing trademark litigation.

Demand for Assurance of Compliance

Some infringement letters may demand that the recipient provide a written assurance that they will comply with the demand. The sender may even send a form for the party to sign that states this information. 

If someone receives a trademark infringement letter, it is important that they take it seriously. They should carefully review the contents of the letter and assess it for its merits. The United States Patent and Trademark Office explains that recipients of this type of letter generally have the following options to respond:

Respond to the Letter

If the recipient believes that the letter is based on a misunderstanding or is meritless, they may send a response letter that lays out their argument. The recipient can also request more specific evidence about how the sender believes the recipient has infringed on the trademark and where ethe trademark is used.

Do Nothing

It is also possible to simply ignore the letter and not to do anything. Some letters may simply be empty threats. Additionally, some such letters are sent in bad faith as a way to mislead or intimidate business owners so that they stop using a mark or offer to pay for the use even though they may have had a right to use it.

Negotiate for Use

It may be possible for the recipient to negotiate with the rightful trademark owner to use the trademark as part of a licensing agreement or other arrangement. 

Comply

To head off possible litigation, the recipient may simply agree to comply with the sender’s request that they stop using the trademark. They may even sign an assurance of compliance document.  

File a Lawsuit

Some recipients may respond to the threat of an infringement letter by going on the offensive and filing their own lawsuit against the sender. They may ask a court to make a ruling that they have the legal right to use the mark in question, called a declaratory judgment.

Back