Trademark Attorney Minneapolis | Cease and Desist Letter: Minimum Format

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Most trademark lawyers in Minneapolis recommend that a cease and desist letter regarding trademark violation should contain, at the very minimum, the following components:

1. Trademark Owner’s Identity

The cease and desist notice should identify who is the trademark owner. If the letter is being drafted by a trademark owner’s representative, then representative should identify in the letter himself and his relation to the trademark owner.

2. Trademark

The letter should state clearly the trademark that the owner believes is being violated. If the trademark is formally registered with the United States Patent and Trademark Office or a relevant state or foreign government authority, then provide the registration number in the letter. It is a good idea to attach a copy of the registration certificate to the letter.

3. Notice of Violation

The letter should explicitly state that the recipient violated the trademark owner’s rights. One of the primary purpose of a cease and desist letter is to give notice, and, usually, the best way to do so is to state it clearly.

4. Description of Violation

The cease and desist notice should explain how the recipient violated the trademark owner’s rights. Usually, a general statement briefly describing the nature of the violation is sufficient. There is no reason to provide a detailed violation of the account for two reasons. First, it is not a good idea to divulge too much information to the other side. Second, a overly-detailed account of violation may actually weaken the trademark owner’s case by stating facts which the other side can prove to be wrong.

Nevertheless, in some situations, describing a violation in an attached trademark complaint may be highly beneficial to the trademark owner’s case, demonstrating the seriousness of his intentions and his confidence in the case. This strategy should be discussed with a trademark attorney in Minneapolis.

5. Description of the Trademark’s Strength

If there are favorable facts that augment the perceived strength of the owner’s trademark, then it may be beneficial to briefly state them in the letter. This is especially true if this a descriptive trademark that acquired distinctiveness through a long period of use and promotion. Again, a trademark lawyer should determine how to pursue this strategy.

6. Trademark Owner’s Demands

The cease and desist letter should set the demands of the trademark owner. Demands may vary greatly depending on the circumstances of a case, but there are some fairly common ones, such as:

a) Cease and desist all illegal activity;
b) Promise in writing not to violate the trademark in the future; and
c) Destruction of infringing materials.

7. Deadline

The cease and desist notice should state the deadline for a written response to the letter. The deadline should give the recipient a fair chance to comply with the trademark owner’s demands. Usually, Minneapolis trademark lawyers use a period between seven and thirty days.

Conclusion

The above-mentioned components merely constitute a basic skeleton of a cease and desist letter. Putting the “meat on those bones”, however, is an art rather than a science: more components can be added, certain arguments may be emphasized, others ignored, wording must be selected very carefully keeping in mind a highly probable litigation in the near future, and countless number of other considerations should be taken into account. Remember, a cease and desist letter is more about advocacy and negotiation, rather than simply giving notice.

This is why you should retain a Minneapolis trademark attorney to write a cease and desist letter for you. Sherayzen Law Office can help! We can draft a proper cease and desist letter, help negotiate a settlement, and litigate the case for you.

Call us NOW to discuss your trademark case with an experienced trademark attorney!

Trademark Attorney in Minnesota: Cease and Desist Letter and Trademark Enforcement

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Prior to engaging in expensive trademark litigation, it is common for Minnesota trademark lawyers to send the violating parties a notice of infringement, demanding that the violators comply with certain demands of the trademark owner and threatening lawsuit otherwise.  This notice is usually called “cease and desist letter”, because it demands that the violator: ceases his trademark infringing activities and promises to desist from future trademark infringement.

Cease and Desist Letter is a very useful pre-litigation tool.  Three factors are usually cited by trademark lawyers in Minnesota to support the usefulness of a cease and desist notice.  First, the letter provides notice to the recipient that he is in violation of the sender’s trademark violations.  This means that, if the recipient persists in his illegal activity, his actions are very likely to be regarded as “intentional”, opening up a host of new legal claims and larger penalties.  Moreover, the trademark owner can subsequently argue that he has done everything he could to end this case amiably and it was the violator who did not want to stop his illegal acts. Second, the letter gives the recipient a chance to stop his infringing activities without paying the costs of an expensive trial and, ultimately, paying a hefty penalty.  Third, the letter is also a chance for the trademark owner to enforce his rights without going through an expensive trial with (depending on the facts of the case) less than certain outcome.   Fourth, the recipient of the letter (unless he is sure of his innocence and wants to go straight to trial) is likely to feel compelled to produce some sort of response to the letter.  This response may be a good way for the trademark owner to assess the strength of the other side’s case.

The format of a cease and desist letter may vary wildly in substance as well as style. In fact, while a certain minimum format is commonly used, the content and style of writing a cease and desist letter depends greatly on the circumstances of a case and is more of an art, than science.

Sherayzen Law Office can help you enforce your trademark rights.  We can help you draft “Cease and Desist Notice”, negotiate the settlement with the party, and litigate your case in court.

Call us NOW to discuss your case with an experienced trademark attorney!

Selecting a Trademark: Trademark Strength

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Selecting a trademark is a creative and legally important process. There are many issues that must be factored into the trademark selection process. One of the most important factors is the strength of the trademark; this is significant because the protection of your trademark against future infringement will depend on how strong the courts will consider your trademark to be.

There are four general types of trademarks: fanciful/arbitrary, suggestive, descriptive, and generic (which are really not marks at all).

1. Fanciful or Arbitrary Marks

The most common definition of a “fanciful mark” is the mark or design that has been created for the sole purpose of functioning as a mark. These are basically words that are new or previously unknown to an average consumer. EXXON is an example of a fanciful mark.

An “arbitrary mark” is a normal word or design used in an uncommon way or context. For example, APPLE is an arbitrary mark for computer-maker.

Keep in mind that fanciful marks can also be designs, not only words. For example, the STAGECOACH design of Wells Fargo is fanciful design mark.

Fanciful and arbitrary marks are considered to be highly distinctive and strong. This means that the marks are highly protected by the U.S. laws against the infringement by competitors. In fact, this is the most protected category of trademarks.

2. Suggestive Marks

Suggestive marks are those marks which subtly suggest the qualities which are desirable in a product or service, but which do not literally describe attributes or qualities of the goods or services with which these marks are associated. For example, GREYHOUND suggest speed which is a desirable quality in bus transportation.

Suggestive marks is the second strongest category of trademarks after fanciful and arbitrary marks. It is still highly protected by U.S. law and can be a trademark as soon as it is used.

3. Descriptive Marks

Unlike suggestive marks, the descriptive marks describe (not merely suggest) the qualities of the products or services in connection with which they are used. A commonly-cited test for recognition of descriptive marks is whether the mark immediately conveys the idea, ingredients or characteristics of goods or services in connection with which the mark is used. For example, VISION CENTER for optical clinics or AUTO PAGE for automatic dialing service.

Descriptive marks constitute a much weaker category of trademarks. In fact, unless a descriptive mark acquires what is known as “secondary meaning” through some period of use, sales, or advertising, it may not be protectable at all.

4. Generic Marks

The generic mark is not really a mark, but merely a term which is or becomes the generic name for the product or service in connection with which it is used. It is basically a common name for a product (or service) produced (or offered) by many companies, such as: automobile or cat food. The courts also found that “urgent care” is a generic term for medical services and “cellophane” is a generic term for a clear plastic wrap.

Notice that some terms which were not originally generic may become so over some period of time. For example, “aspirin” became generic over time.

Conclusion

Generally, the more distinctive the mark is, the more protectable it is likely to be. Therefore, from a legal standpoint, the stronger marks are those that are original and unlikely to infringe the rights of others.

Sherayzen Law Office can help you select and research the trademark for your business, evaluate your mark’s strength and file trademark registration applications with the USPTO as well as relevant state authorities. Call (952) 500-8159 to discuss your trademark with an experienced trademark lawyer!

Trademark Lawyers Minneapolis: Advantages of Federal Trademark Registration

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Obtaining federal registration of a trademark can bestow on the trademark owner (“registrant”) a number of evidentiary and substantive advantages:

1. Federal trademark registration is a prima facie evidence of the validity of a registered mark, the registrant’s ownership of the mark, the continued use since the filing date of the application and the exclusive right to use the mark in commerce (in connection with specified class of goods or services);

2. Federal trademark registration give the registrant nation-wide rights (with certain exceptions);

3. Federal trademark registration provides a constructive notice of the registrant’s claim of ownership of the mark;

4. Federal trademark registration allows the registrant to file the lawsuit for trademark infringement in a federal court;

5. Federal trademark registration entitles the registrant to statutory remedies, including treble damages and criminal penalties in counterfeit cases;

6. Federal trademark registration allows the registrant to obtain “incontestability” (which precludes cancellation of a trademark registration based on prior use or descriptiveness) after five years of continuous use and filing of necessary paperwork with the USPTO (United States Patent and Trademark Office);

7. Federal trademark registration establishes registrant’s rights under the Paris Convention, including priority rights on foreign filings and the right to register abroad based on the U.S. registration;

8. Federal trademark registration provides the registrant with an ability to bar importation of goods which bear infringing trademarks. The registrant will need to deposit a copy of its U.S. trademark registration with the U.S. customs.

Call Now at (952) 500-8159 to discuss your trademark registration with an experienced Minneapolis trademark lawyer!