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Trademark Enforcement: Notices and Cease and Desist - YouTube
Channel: Trademarks And Patents For Growing Businesses
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So what can you do if you discover that
someone is stealing your customers by
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using your brand names to sell product
either on their own or through a
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3rd website (a 3rd party website, we
sometimes call it)? So, for example,
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if someone's selling a product using the
same brand name as you have but they're
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doing it on, say, Amazon (Amazon is the
3rd party) Well, this is part of what we
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address in the 5th Step, Enforcement, of
the E5 Trademark System.
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And specifically, what you'll want to do is
provide Notice to these infringers that
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they are using a mark that you have a
registration on or perhaps that you have
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a State Registration or Common Law
Rights to, but you want to put them on notice.
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You also especially want to put
3rd parties on notice. 3rd parties, they
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can be kind of difficult to recover
damages and enforce injunctions against
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them. So, by putting them on notice early,
you can establish that they are aware of
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the Trademark Registration. And if it
comes down to a judge enforcing an order,
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then because they have Notice, it's
considerably more likely that you'll be
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able to see that your mark is enforced
against that 3rd party with Notice.
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The next step after sending a Notice, and
occasionally the 1st step is a
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Cease and Desist Letter. Now, the Cease and
Desist Letter certainly goes to the
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company and business that's actually
using your registered mark. This is
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telling them to Cease (big word for stop)
and Desist
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(the word for quit using, going forward)
your Registered Trademark. Again, it could
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apply to some Common Law Rights as well;
but typically, there's going to be a
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registration behind it -- Oh by the way,
this is why you should register your
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mark now instead of waiting into the
future because it's much more difficult
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to enforce a registered, pardon me, it's much more
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difficult to enforce a mark if it's not
registered in a court system. So, when the
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Cease and Desist Letter goes out, you're
telling them to stop and that the next step
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may be litigation, either directly or
you're implying it. Now, here's a nuance
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that's important: When you send out a
Notice Letter, you typically are not
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threatening litigation, you're just
making them aware, and the reason for
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that is because you don't want them to
go running to court and seeking what's
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called a Declatory Judgment, court
declare that we're not infringing this
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mark. And to run into a court with a
Notice Letter will often get that case
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thrown out. However, a Cease and Desist
Letter is much more specific. It is going
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to allege specific infringement and
sometimes even cite specific acts of
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infringement and actual confusions, and
it will be crystal clear that the next
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step is probably going to be litigation.
So, when you send the Cease and Desist
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Letter, you have to do so with a
realization that the opponent may rush
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to the courthouse and actually follow a
Declaratory Judgment Action first.
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So, what do you do if you think your
opponent is litigious? Well, the answer that
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many attorneys will give you is that you
should go ahead and file a lawsuit
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without actually serving process of the
lawsuit, so it's not actually
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effective yet to prevent someone else
from forcing you to litigate an
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infringement case in their state or city
far away from you.
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So, using Notices and Cease and Desist
Letters wisely is an important part of
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enforcing your rights. And in fact,
at my practice, we have a system that we can
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set up that automates Notice Letters and
Cease and Desist Letters because they
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are full of additional information
almost always are unique to the
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recipient. However, a Notice Letter can be
made broader and more standardized
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so that it can be used more automatically.
Again, you have to address it to the
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right people and make sure that the
right people get the Notice,
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but that's part of this enforcement
process. So, if you know of someone who's
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using your mark without your consent,
they're stealing your customers, and if
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they're doing it through a 3rd party,
be in touch and we will assist you with
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managing that issue and helping ensure
that your customers are not stolen from you.
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