This is intended as a concise guide to responding to allegations of trademark infringement.
Do Not Immediately Contact the Accuser
Anything you say can and will be held against you in a court of law. If you have received a cease & desist letter or been threatened with purported trademark rights, resist the urge to fire off hostile emails, leave voice mails, or write heartfelt letters trying to explain use of the brands or logos. Statements made in haste will usually paint you into a corner and limit legal options later.
Research the Underlying Trademark Rights
Not all trademarks are created equal. Some are federal rights, some are state rights, and some are common law rights restricted by geography. Some alleged rights are nearly worthless because they are "generic" or "merely descriptive" of the goods or services in question. On the other hand, some trademarks may be "incontestable" because they are strong and have been registered for some time. So, it's important to get a handle on the rights in question.
Research Your Exposure to Damages or Injunctions
An intelligent response will need to consider exposure to monetary damages or injunctions. In some cases, a response will depend on how committed you are to using a particular mark. If it is a good or service already on the market, or in the hands of your customers, it's important to consider issues like indemnification rights, insurance, possible product recalls, and defense costs. And of course, the exposure will also depend on core issues such as whether there is a "likelihood of confusion" of customers. If there are similar names and similar goods or services, there may be a problem.
Decide Whether to Fight or Negotiate
After a thorough assessment has been made of the legal rights in question, and the possible exposures, an informed decision needs to be made about whether to hash it out in court, or whether licensing negotiations or settlements should commence to contain liability. Of course, usually both options may need to be kept on the table to leverage a favorable outcome. This is a balancing act between the likely costs of defense versus the actual risks of being found liable for infringement.
Consider the Terrain and Venue for a Dispute
If it needs to go to court, and a case has not already been filed, decisions need to be made about favorable jurisdictions to litigate an important dispute. Different federal circuits may have different rulings on a range of issues that span from pleading standards, to the likelihood of awards of attorney fees. In many cases, jurisdiction may be proper in multiple venues, so convenience of the parties, witnesses, jury pools, and judicial preferences need to be considered carefully.
Hire a Competent Trademark Litigator
Hire a specialist. Trademark litigation is nuanced. You want somebody who has experience in the realm so they will not be learning on your dime. Hire an attorney you can afford, but know that sometimes a cheap attorney will cost you more in the long run. And importantly, hire an attorney that you trust. Litigation can be stressful, so you need a solid foundation.
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