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I got a cease and desist letter from a company in another country using a similar name just reversed.

Las Vegas, NV |

I got a cease and desist letter from a company in another country using a similar name just reversed. For example our company in the USA is labeled www.johnsmith.com and the other company is based in the UK there site is called www.smithjohn.com.

Both companies are two completely different websites and companies with different logos. and designs. In fact the UK site actually points to another domain all together they don't have a site built yet. They just said the were planning on one at the end of the year.

Attorney Answers 5


  1. I would need to know a substantial amount of additional information before I could begin to advise you. For example, even though the two companies have different web-sites, do the two companies compete in the same industry or geographical industry for the same customers? Even though the UK company has not yet operated the web-site, it may have been using the name in commerce in other ways. Further, if it is the senior user/registrant and and if it has a legitimate intent to use the domain name/trademark in commerce, it may have a valid basis for sending the cease and desist letter. You need to take the cease and desist letter seriously---the fact that the names are reversed does not change the analysis----the ultimate issue is always the likelihood of consumer confusion (from a trademark perspective). Thus, you have no real alternative other than to retain legal counsel to review this situation and protect your interests.


  2. It is a bit difficult to respond without your being clear whether they are complaining about your domain name or your trade name. Generally, domain names can be whatever is available. The limit is so long as you do not take a name with the intent of forcing someone with a claim on it by virtue of use of the underlying name in commerce to pay exorbitantly to wrest it from you. If they object to use of your trade name then it is a question of who began first to use it in commerce. But it is complicated by the international character of this CDL. You had better not try to deal with this by yourself—no more than a persistent toothache. Spend a few bucks to formally consult a TM attorney to se if you need to change something, make a deal or stand pat. The stakes may be far more dollars.

    Licensed in Maryland with offices in Maryland and Oregon. Information here is general, does not create a lawyer-client relationship, and is not a substitute for consulting with an experienced attorney on the specifics of your situation.


  3. You need to consult with a lawyer about the specifics of your case. A couple of issues seem to be at play. First, whether the UK company has any rights to its mark in the USA. Generally, if a UK company has not used the mark in commerce in the USA, it has not TM rights here. Second, assuming the UK company has rights in the USA, is there a likelihood of confusion between the two marks. This is a highly factual issue with many complex legal issues, which cannot be answered here.


  4. At the very least, reversal is a risky defense against a claim of trademark infringement. It smacks of deliberate deceit. It might survive [e.g. SoftMicro Enterprises even promotes Microsoft products] or might get hammered in court.

    Companies are not websites, they have websites. Different logos might help in a tradename conflict, but are usually inconclusive. Pointing to a website to be built may or may not be relevant - depends on the facts and what else is happening.

    You are just reciting facts you hope are favorable to you and, I suppose, hoping to get one of us to pronounce you completely in the clear. That's not going to happen.

    When you get in a tradename dispute, the first question you should ask is "Where is the trademark lawyer or business attorney I should consult?" You can find one easily here on Avvo under the Find A Lawyer tab. Las Vegas is a big entertainment capital so you will have no trouble locating one. If you do, email any of us and we can recommend one to you. Then go see that attorney so you can reveal specifics confidentially in a way you should never do here on this public forum.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.


  5. How to Respond to a Cease and Desist Letter
    Upon receiving a demand letter, the recipient may respond on its own or consult with trademark counsel. Often, counsel will send a “hold” letter to buy time to investigate the merits of the mark owner’s claims, consult with the client, and prepare a response. Responses to a cease-and-desist letter generally fall into three main categories:1) The alleged violator agrees to comply with the mark owner’s demands;2) The alleged violator does not respond within the specified time frame. At this point, the mark owner often will send a follow-up letter;3) The alleged infringer denies the allegations of infringement and/or asserts various legal defenses justifying its ability to use its mark, files a declaratory judgment action, or offers a compromise solution for going forward.

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