So what can you do if you discover thatsomeone is stealing your customers by using your brand names to sell producteither on their own or through a 3rd website (a 3rd party website, wesometimes call it)? So, for example, if someone's selling a product using thesame brand name as you have but they're doing it on, say, Amazon (Amazon is the3rd party) Well, this is part of what we address in the 5th Step, Enforcement, ofthe E5 Trademark System.
And specifically, what you'll want to do isprovide Notice to these infringers that they are using a mark that you have aregistration on or perhaps that you have a State Registration or Common LawRights to, but you want to put them on notice.
You also especially want to put3rd parties on notice.
3rd parties, they can be kind of difficult to recoverdamages and enforce injunctions against them.
So, by putting them on notice early,you can establish that they are aware of the Trademark Registration.
And if itcomes down to a judge enforcing an order, then because they have Notice, it'sconsiderably more likely that you'll be able to see that your mark is enforcedagainst that 3rd party with Notice.
The next step after sending a Notice, andoccasionally the 1st step is a Cease and Desist Letter.
Now, the Cease andDesist Letter certainly goes to the company and business that's actuallyusing your registered mark.
This is telling them to Cease (big word for stop)and Desist (the word for quit using, going forward)your Registered Trademark.
Again, it could apply to some Common Law Rights as well;but typically, there's going to be a registration behind it — Oh by the way,this is why you should register your mark now instead of waiting into thefuture because it's much more difficult to enforce a registered, pardon me, it's much more difficult to enforce a mark if it's notregistered in a court system.
So, when the Cease and Desist Letter goes out, you'retelling them to stop and that the next step may be litigation, either directly oryou're implying it.
Now, here's a nuance that's important: When you send out aNotice Letter, you typically are not threatening litigation, you're justmaking them aware, and the reason for that is because you don't want them togo running to court and seeking what's called a Declatory Judgment, courtdeclare that we're not infringing this mark.
And to run into a court with aNotice Letter will often get that case thrown out.
However, a Cease and DesistLetter is much more specific.
It is going to allege specific infringement andsometimes even cite specific acts of infringement and actual confusions, andit will be crystal clear that the next step is probably going to be litigation.
So, when you send the Cease and Desist Letter, you have to do so with arealization that the opponent may rush to the courthouse and actually follow aDeclaratory Judgment Action first.
So, what do you do if you think youropponent is litigious? Well, the answer that many attorneys will give you is that youshould go ahead and file a lawsuit without actually serving process of thelawsuit, so it's not actually effective yet to prevent someone elsefrom forcing you to litigate an infringement case in their state or cityfar away from you.
So, using Notices and Cease and DesistLetters wisely is an important part of enforcing your rights.
And in fact,at my practice, we have a system that we can set up that automates Notice Letters andCease and Desist Letters because they are full of additional informationalmost always are unique to the recipient.
However, a Notice Letter can bemade broader and more standardized so that it can be used more automatically.
Again, you have to address it to the right people and make sure that theright people get the Notice, but that's part of this enforcementprocess.
So, if you know of someone who's using your mark without your consent,they're stealing your customers, and if they're doing it through a 3rd party,be in touch and we will assist you with managing that issue and helping ensurethat your customers are not stolen from you.