Trademark Rights: Changes in the Law Cease & Desist

Receiving a cease and desist (“C&D”) letter demanding that you immediately cease using a trademark or face potential litigation may be bewildering (even frightening).  C&D letters typically request the recipient to transfer a domain name and stop infringing another’s trademark.  Because it may be the “first shot across the bow” — a warning that legal action against the recipient may be forthcoming — you should pay close attention to the legal claims contained in the letter.

Rarely should you ignore a C&D letter.  Moreover, if you receive one and believe that your conduct is not infringing, you have a powerful option. If the letter creates a “real and reasonable apprehension” of litigation, you have the right to file a declaratory judgment action in which you may request the court for a judgment declaring that you have not infringed any rights or engaged in any other wrongful conduct.  Clearly, the more direct the allegation of infringement in a C&D letter by a sender, the greater the risk that it can provide a basis for a declaratory judgment suit.

Until a few years ago, a C&D letter would not have provided grounds for a recipient to file a civil lawsuit against the sender. Article III of the U.S. Constitution requires an “actual controversy” before a federal court has jurisdiction over “cases and controversies”.  However, in 2007, the U.S. Supreme Court (in MedImmune v. Genentech) redefined the meaning of “case and controversy” and ruled that receiving a C&D letter provides an actual controversy, in the intellectual property context, giving rise to the recipient’s right to file a federal declaratory judgment action.

If you receive a C&D letter, you should contact a litigation attorney versed in intellectual property law to determine the wisest course of action.

— Deborah A. Logan, Esq.