Can Trademark Lawyers Send International C&D Letters?

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.

International Trademark Registration Options That Strengthen International C&D Letters

A C&D letter sent to a foreign infringer carries significantly more weight when the trademark owner can point to a registration in the country where the infringement is occurring. The most efficient mechanism for obtaining international trademark protection is the Madrid Protocol, administered by the World Intellectual Property Organization (WIPO). Under the Madrid Protocol, a U.S. trademark registrant can file a single international application through the USPTO that designates multiple member countries — currently over 130 jurisdictions — for protection.

Each designated country examines the application under its own national trademark law and either grants or refuses protection within the country’s examination period. If granted, the trademark owner has a registration in that country enforceable under local law. A C&D letter backed by an in-country registration is far more credible than one based solely on U.S. rights. The trademark attorneys at Revision Legal work with trusted local counsel networks in major markets to assess the best international filing strategy before enforcement action is initiated.

The Legal Framework for Enforcing U.S. Trademarks Internationally

While U.S. trademark registration provides nationwide rights within the United States, it does not automatically create enforceable rights abroad. Each country applies its own trademark law. Some countries follow a “first-to-use” system similar to the U.S.; others follow a strict “first-to-file” system where whoever files first owns the mark regardless of prior use elsewhere. China is the most notable first-to-file jurisdiction — a problem that has resulted in substantial “trademark squatting” where entities preemptively register well-known foreign brands before the foreign owner files.

An international C&D letter should be drafted with this in mind. If the infringer is in a first-to-file country where they hold a local registration, the leverage a U.S.-rights-based C&D letter provides is limited. In that scenario, the legal strategy often shifts toward negotiating a coexistence agreement, challenging the foreign registration through local administrative proceedings, or pursuing a UDRP domain name proceeding if the infringement is primarily internet-based.

Practical Considerations Before Sending an International C&D Letter

Before a U.S. trademark attorney drafts an international C&D letter, several practical assessments must be made:

• Identify the legal basis: What U.S. or foreign trademark rights support the claim? Is there an active U.S. registration? Any foreign registrations?
• Assess the infringer’s jurisdiction: Does the infringer operate in a country with strong trademark enforcement and rule of law? A C&D letter sent to a jurisdiction with minimal IP enforcement may produce no result.
• Evaluate the evidence of infringement: Is the copying exact (a counterfeit), or merely similar? Counterfeiting claims are stronger and more likely to prompt a response.
• Consider the business relationship: Is the infringer a customer, supplier, or distributor? The tone and content of the C&D letter should reflect any existing commercial relationship if its preservation is a goal.

International trademark enforcement requires experience, judgment, and global perspective. The trademark attorneys at Revision Legal handle international trademark matters and coordinate with local counsel in key markets. Call us at 231-714-0100 or 855-473-8474 to discuss your international trademark enforcement options.