Yes, U.S.-based and licensed trademark attorneys can send cease and desist (“C&D”) letters internationally. Care must be taken, however. The owner of the trademark asking for a C&D letter to be sent must be able to verify ownership of the trademark. Further, it is best that the trademark in question is registered with the U.S. Patent and Trademark Office and that such registration is up-to-date. Finally, there must be good evidence that the target of the C&D letter has actually infringed — or will actually infringe — against the trademark in question. Finally, a foreign-delivered C&D trademark letter is most effective if the trademark in question has been registered under the national laws where the trademark is — or will be — infringed. That is, the legal protections afforded to a U.S. trademark registration does not extend to the territories of a foreign nation.
What is a C&D letter?
A C&D letter is correspondence — often sent via mail but also via email — that alleges that the target of the letter is engaged in illegal or unlawful activity, and the C&D letter demands that the behavior stop. With trademark infringement C&D letters, the letter also identifies the trademark in question, the owner, the infringing behavior, and the potential legal consequences if the infringing behavior does not cease.
Are C&D letters effective?
C&D trademark infringement letters sent internationally can be very effective. Other C&D letters have no impact and are ignored. Part of the reason depends on the strength of the infringement claim and the level of intention on the part of the infringer. Challenging the use of an exact replica of a trademark is a stronger claim than a claim that the other trademark is “confusingly similar.” A C&D letter for the former will be more effective than in the latter case. Similarly, if the infringer is purposely — with malicious intent — engaged in counterfeiting, then a C&D letter will have no impact.
Why send a trademark C&D letter internationally?
Trademark C&D letters sent internationally are important. A C&D letter might have the desired impact and cause the infringing behavior to stop. Alternatively, the letter might prompt a response that resolves a misunderstanding or leads to some sort of agreement between the parties.
Even if there is no appreciable impact, trademark C&D letters must still be sent. One reason is to establish legally that you have asserted your legal property rights. This avoids any argument that you have waived your rights. In addition, sending a C&D letter prevents the recipient from claiming an accidental or innocent infringement. The infringer’s receipt of a letter (or more than one) puts an infringer on notice. This also helps establish intentional infringement, which, if proven, significantly enhances the possible litigation damages that can be recovered.
Another reason for sending C&D letters is to provide proof that you — the owner of the trademark — routinely and regularly police the use of your trademark in the marketplace. Such efforts prevent anyone — even a third party — from winning a legal argument that the trademark in question has been abandoned.
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
