the Trademark Resource for Start-Ups, Business Owners, Marketing Professionals, In-House Counsel, and Attorneys

Cease & Desist Letters

Picture of a server room with text "trademark counsel's duty to preserve"

The legal principles relating to litigation holds are not trademark specific. But it is clear that the rules requiring a party and its counsel to implement a litigation hold apply equally to trademark infringement litigation. These are rules that a trademark owner and its trademark counsel—both trademark prosecution and trademark litigation counsel—should know. They should know these rules because they are easy to run afoul of and, in fact, most trademark owners and their counsel are not fully complying with litigation hold requirements. Litigation holds are not being implementing early enough (or, in some cases, at all), are not being implemented properly, and are not being monitored for compliance. continue reading→

This post lives on the other side of the coin from my prior blog post entitled “On Trademark Cease and Desist Letters: Strategies & Considerations.” Responding to a trademark cease and desist letter is an art form. The nature of, and strategy behind, the response will vary depending on the facts and circumstances. Here are some guideposts to help you get it right. continue reading→

Picture of Mailboxes along Route 66 with text reading "The Trademark Cease and Desist Letter - Strategies & Considerations"

Trademark cease and desist letters are a crucial part of a trademark attorney's arsenal. Granted, they seem simple and straightforward. However, when you dig beneath the surface, they are deceivingly complex. When a trademark owner undertakes the task of sending a demand letter without counsel, many important strategic and substantive legal issues are not vetted. The same goes for using an attorney who does not specialize in trademark law to send the cease and desist letter. This post is here to help. Use it as a resource to check off items that you should consider when sending a trademark cease and desist letter.

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Personal Liability for Trademark Infrinement

Sometimes you're the windshield. Sometimes you're the bug.
-Mark Knopfler, Dire Straits

Great quote and apropos ahead of this week's road trip down to Southern California. There are, of course, several mutations of that quote. Sometimes you're the hammer. Sometimes you're the nail. Sometimes you're the dog. Sometimes you're the hydrant. Sometimes you're the pigeon. Sometimes you're the statue. (Side note: still so hard to write or say statue instead of statute.) You get the idea, but I'll add one more to the mix. Sometimes you're the trademark bully. Sometimes you're the bullied. continue reading→