If you receive a trademark claim, it is likely in the form of a cease and desist letter saying you are potentially infringing the trademark of someone else and demanding that you stop using the mark. (If helpful, you can read our Trademark Basics guide.) You should treat a cease and desist letter seriously.
What are my options?
There are several ways to respond to a cease and desist letter or email, and these options may each have their own legal ramifications. Among the options are:
(a) If you have a basis for doing so, you may respond to the letter or email and deny infringement; or
(b) You may respond by requesting more specific evidence on why they think you are infringing their mark, including asking their dates of first use, whether they have federally registered the mark, and the geographic areas where the mark has been used. (You can also conduct your own trademark search via www.uspto.gov.)
2. Do Nothing
You can choose to not respond to the letter or email or any follow-up letters and emails. Some trademark cease and desist letters or emails are sent in the hope that those who receive them will be misled or intimidated into stopping or paying for use even though they do not need to do so. However, the decision to not respond shouldn’t be made lightly, because doing nothing carries some risk: if you are later found liable for infringement, the court may determine that you acted recklessly in not responding to the letter and subject you to additional monetary damages.
You may negotiate with the trademark owner for a license to use the mark on mutually agreeable terms, or to obtain an agreement that do not infringe the trademark.
4. File Your Own Lawsuit
You may want to explore suing the trademark owner for a "declaratory judgment," a judgment stating that your mark does not infringe their trademark.
Am I being sued or will I be sued?
Receiving a letter, without more, does not mean that you have been sued. Generally, if a federal lawsuit is filed against you, the trademark owner must deliver both a complaint and a summons to you personally or to a registered agent for your business. Because of this service requirement, you will usually know when you have been sued.
Do I need a lawyer?
While you are not required to have a lawyer to respond to a cease and desist letter, a lawyer can help you understand the scope of your trademarks rights and the strengths and weaknesses of the allegations against you. Though it can be expensive, a lawyer may help you navigate the negotiation with your accuser and ultimately save you from additional costly legal problems.