Skip to main content

How should I proceed with a response to a legal firm?

Jacksonville, FL |

I received a Cease & Desist from an attorney letter stating that I am infringing on their clients trademark rights by using *Company* in connection with advertising and sale of my product. They continue and state that the use of the *company* will create a likelihood of confusion as to the source, sponsorship or approval (Basically Consumer Confusion)

Our products are of close proximity as they are the same type of good. Our brands are completely different, we disclose our products as our own brand etc. Their trademark can be used to described the durability of a product and in my opinion is a loose term or rather ambiguous. Its not like Sony or Coca-Cola is their TM. I would be more than happy to send specifics via private message etc if that is acceptable on this forum

+ Read More

Attorney answers 7

Posted

You should proceed by hiring an intellectual property law attorney who handles trademark infringement matters to make that response. You would be very foolish to try yourself to practice law without a license on something so important and nuanced as trademark conflict matters. It sounds like the law firm has a reasonable basis for writing you. You are in more trouble than you think. Get an attorney.

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.

Asker

Posted

Bruce- Thank you for your response. It has to do with an Ebay listing that involves their clients name in auction title. Nonetheless, I thought I would try to get a straight answer here before speaking with a capable attorney. I read your articles on trademark, great read btw!

Bruce E. Burdick

Bruce E. Burdick

Posted

OK, you might be using their name properly in comparative advertising, but more likely used it improperly and that drew the CDL (cease and desist letter) from them. Don't respond yourself as "anything you say can and will be used against you" perhaps in a court of law! :-)

Bruce E. Burdick

Bruce E. Burdick

Posted

You have the right to an attorney, but in these types of cases even if you cannot afford one, one will not be appointed for you. Some brand owners like to sue little guys who can't afford to defend as that discourages other little guys from going on eBay and infringing their marks. So, bottom line, your first step is to get legal help so you even the playing field.

Posted

There is a simple answer to your question. Immediately engage a lawyer who's expert in intellectual property disputes involving trademarks andd business names.

This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance.

Posted

s a quick example of why your intuition in TM matters does not correspond to the alw is you complain about how their TM " is a loose term or rather ambiguous." If it were more precise it would not be an OK TM. You need a lawyer who knows TM law.

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.

Philip Leon Marcus

Philip Leon Marcus

Posted

OH, and as for private messages, this forum deals only with the geenral. For the specific one needs to hire one of us.

Posted

I concur with my colleagues. Law is more than "common sense" analysis. Against a company with a lawyer, you will almost certainly not prevail by yourself.

The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.

Posted

I echo my colleagues' responses. YOU shouldn't respond, you should hire TM counsel to respond for you. Frankly, you don't know what "completely different" even means in the TM context. By sheer luck, you could be right, or you may be, as a lot of non-lawyers are, dead wrong about what's "similar" and what's "completely different."

Lawyers go to school for 3 years, get a degree, pass the bar exam (sometimes more than 1), practice for years, read innumerable cases about their practice, and have a MUCH better and subtle grasp of the governing law as applied to any given facts. Since you didn't do any of that, you ned to realize that need to hire professional help, because you're playing on our turf, and you don't know the rules of the game.

You acknowledge your products are similar, so the issues are 1) if their TM is even protectible, and 2) if so, whether your use infringes. Only a TM attorney is qualified to address those questions.

Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.

Posted

It would be difficult to give you a suggested direction without specifics. Please feel free to send a confidential message.

Michael
www.accessipgroup.com

The answer provided is only for general information purposes and does not constitute legal advice.

Posted

Find an intellectual property attorneywho will give you a brief, no cost consult. This can be done on the phone. You basically have three options: 1) don't respond; 2) respond yourself (not recommended); and 3) engage an IP attorney who will work within your budget to respond appropriately. The response can take several forms ranging from a simple letter to a declaratory judgment action. A poorly constructed response may result in loss of rights or damaging unintended admissions. C&D letters are common: many of them are drafted poorly. In my experience a well written response can put an end to the matter, in many cases at least.

This response is provided as educational and not as specific attorney-client counsel. If you would like to discuss your question in confidence please feel free to contact me.

Bruce E. Burdick

Bruce E. Burdick

Posted

Welcome to Avvo. That is a nice concise answer.