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What should you do if you receive one of those jarring letters asserting you are infringing someone else’s trademark and you better stop now or else?

First of all, don’t ignore the letter and second of all, don’t panic. Very often these matters can be resolved amicably without things getting terribly ugly. The important thing is to make a considered response. Don’t read the letter, get upset and immediately dash off an email or pick up the phone and call the party who sent the letter. You need to consider your options with a cool head.

There are various types of cease desist letters you may potentially receive. The letter may make a strong case that your use of your trademark infringes the rights of the party sending you the letter, backed up with citations to law and facts that if proven would build a strong case for the sender of the letter. You might also receive a letter with a very weak claim, sent by a party or even an attorney who does not understand the boundaries of their trademark rights. It’s not unheard of for trademark owners (or their attorneys) to be overly aggressive in their enforcement strategies, sending out cease-desist letters to parties whose trademarks are almost certainly are not infringing.

So, your best bet when you are on the receiving end of one of these letters is to sit down, take a deep breath and call your trademark lawyer.  Your attorney can properly evaluate the claims made in the cease desist letter and advise you on how to best rely.  If it seems that your use was infringing, your lawyer may be able to work out an arrangement that resolves the situation with as little cost and business disruption as possible. And if it seems from the facts that your trademark use really is not infringing, your attorney can draft a response to the letter, setting forth why there is no infringement.

In trademark law matters, as in life, it’s important never to act rashly, but to consider your options with a cool head, and then, after careful deliberation, execute your plan.

Rule #1

Always consult with your trademark attorney before making any changes to the way you use the trademark.

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Thomas M. Wilentz is a published writer on intellectual property law who has been practicing trademark law for 18 years. His firm, Thomas M. Wilentz Attorney at Law, PLLC, was founded in 2003 and since then has helped clients from all over the USA, as well as from Canada, China, the UK, Australia, Malaysia, Mexico, Singapore and many other countries.