Dealing with cease-desist letters (Part One)

Here's another fun hypothetical, trademark fans!*

Let's say you've been doing business for a few years selling scented candles and you own the registered mark "MOOD" for those goods.  You're feeling pretty good - in a pretty good mood - because your candle sales are going well.  Then, one day, IT COMES.  In a certified envelope from the U.S. postal service (and usually nowadays with a copy by email): the CEASE-DESIST LETTER!

You open the letter and read it, and are astonished to learn that a company located in (let's just say) France claims that they have prior rights to the MOOD trademark.  Already, you have the feeling that this letter is going to ruin your day.

Reading further, you learn that the French company "owns registrations for the MOOD mark in the United States and thirty five countries worldwide" and " through such extensive use of the mark has established invaluable good will in the mark" and further that your use of the mark "is likely to cause consumer confusion" and is in violation of various trademark laws.

Finally you get to the part where the writer of the letter, usually an attorney for the French company, demands you cease all use of your mark and otherwise comply with the demands set forth in this letter within ten days, or else they will have no choice but to advise their client to take such legal actions as may be necessary to protect their rights to the MOOD trademark.  

It sounds very bad.  But before you panic, there are a couple of things you want to look at.  First, do they mention in the letter what sort of products or services the French company sells under its MOOD mark?  If not, and the mark is not famous like Coca-Cola or McDonald's, this should tweak your antennae.  If they mentioned their trademark registration numbers, go to the USPTO web site and look at their trademark registrations.  Sometimes what you will find may surprise you.  For instance in this hypothetical, suppose you went to the USPTO site and found that the French company did in fact own several registrations for the trademark MOOD, but the goods identified in all of these registrations are specially designed nuts and bolts for use in submarines.  In that case it looks like you can go ahead and make a sandwich and get on with your day.  Because owning MOOD for nuts and bolts used in submarines would not (at least on the planet I live on) give you the right to prevent another entity from selling scented candles under the MOOD mark.  But before you tuck into that sandwich make a note to yourself to call your trademark attorney after lunch to have them review the cease-desist letter, research the claims and respond to the sender.  If their claims are weak or highly questionable, a strong response pointing out the weakness of their claims is usually enough to send them packing. 

Alternately, in the event that the French company owns the MOOD mark for aromatherapy products, which arguably are related goods to scented candles, your TM attorney will be able to advise you how best to proceed to minimize problems.

This is NOT legal advice, of course, and the writings on this blog are provided solely for the amusement of the readers.  Consult your attorney before taking or omitting to take any action (except you may breathe prior to consulting your attorney).





*Actually there are no trademark fans, but I just wanted to say that. There are however, certain types of fans that are sold under registered trademarks.  So that is pretty cool.