The cease and desist letters seem to be a frequent occurrence and many businesses small and large are struggling to determine what is the first step they should take. We’ve seen an array of letters from logo infringement to the use of photography in social media or your website.
How to determine the validity of the letter?
First, check who sent out the letter. Remember that anyone can send a cease and desist letter and an attorney does not have to be involved. Most common letters you will see are from foreign entities accusing businesses of misuse for example of an image and requesting immediate payment for damages. This usually is a red flag and you need to further investigate the legitimacy of such correspondence. Before making any payments, check exactly what image or item is being referred to and how you acquired it. Consult with an intellectual property lawyer if you believe there’s a possibility for infringement.
When a letter comes from a legitimate law firm it usually creates an immediate concern. This does not automatically mean that you are at fault. Large companies with big budgets will stop at nothing to prevent companies with even remotely similar names from existing. A legitimate letter will list instances of any “possible” infringement. The more vague the wording and a threat of a lawsuit can still be simply “trademark bullying”.
When can an infringement be possible?
Photography, Videos and Fonts
If you downloaded an image from Google and used it on your site, there’s a probability that you might be using someone else intellectual property. You should take that image or video down immediately, regardless if that particular instance is legitimate. Always utilize photos and videos that you purchased a license for (from an online source or a photographer) or you took it yourself. Also, check the limitations of your photography use, even when the image has been licensed. Fonts used on your website may also have a limit on the number of times the font can be displayed over a period of time (month, year). For websites with millions of visitors each month, the safest approach is to use Google fonts that do not carry any limits on website font usage.
Trademark Infringement
Trademark infringement requires a “likelihood of confusion,” – it needs to create a reasonable likelihood that an ordinarily attentive consumer would, upon seeing your name believe that it’s somehow the same company. A similar name does not automatically mean that you are infringing on a trademark. In this instance, two companies using the same word in their name would not be able to exist across the entire country. This is absurd. If your name is for example “Small Town Cookies” and you are a bakery and you receive a trademark infringement letter from a company “Small Town Dumpsters” who so happened to register their trademark under services for waste removal, you are not automatically infringing on their mark. There is a very low probability that a client would mistake your cookie business with a waste removal company, just because the names are similar. Now, if you start offering cookies, cakes and get into waste disposal services, a possible infringement may occur.
How to protect your business?
When it comes you business name, filing a trademark is well worth it. It is not as expensive as you may think and requesting more information from a local intellectual property law expert is the first step. Include all your current classes of services and any other ones you may offer in the near future.
Unfortunately, cases of trademark bullying are very common, and filing an application for federal registration of your name, logo or both will give a peace of mind.
When it comes to photography, videos and font usage, especially on your website and in any digital advertising, always ensure that the source allows for the intended use. Although purchased stock photography allows use in mass print, there will also be a limitation on how many times an image can be reproduced. Make sure that any use carries the correct license.
Please note, this article does not provide any official legal advice and we always recommend consulting with an intellectual property lawyer to determine the best course of action.