Startups Stack Exchange Archive

How to handle a potentially frivolous cease and desists

• posted by: James Barry on 2015-11-17
• tagged: legal, trademark
• score: 2

Our UK startup has received a cease and desist from a foreign company operating in vaguely the same space, due to both of our names/logos featuring the same adjective.

We’ve been informally advised by trademark lawyers that their case does not have much merit, but a formal response to their lawyer’s letter will cost us upwards of £1,000/$1,500k. As a bootstrapped business we can just about afford this - but I’m concerned that if we open a legal dialog these costs will spiral out of control.

How best should we proceed? I’ve been advised that we shouldn’t ignore this, but I’m not sure that a letter from me (a programmer!) is enough to deter them. It seems a shame to give in to what seems like frivolous litigation, but without a budget of many thousands of dollars, I’m struggling to see any other option.

Answer 7876

• posted by: Luke Gedeon on 2015-11-17
• score: 1

I am not a lawyer and it is out of scope for this site to tell you what you should do, but we can provide some insight that might help you make a more informed decision.

• Companies have to defend their trademarks or they will lose them.
• Cease and desist letters are typically sent in an attempt to avoid legal action. A friendly letter in response will usually get the best results.
• The goal of trademark disputes is to put enough distance between competing companies that it will be easy for customers to tell which one is which. You could suggest a tagline, logo modifications, name modifier (if you are in different markets/industries, or other ways to make it clear that you are not related.
• A lawyer is not required for writing a response. If there was a lot of money on the table or having this particular name/logo was critical to your success it might be worth the cost, otherwise, bootstrap the letter like everything else we do as a startup. :)
• In most cases, you can rebrand for less than the cost of a lawyer - if they ever prove they have a case. They haven’t yet.
• An adjective that commonly describes the service is not generally available for either party to trademark. If you sell cold water and cold is your brand, you don’t have a trademark.
• The burden of proof is on the trademark holder. They must provide documentation of an existing trademark registration, proof that you are in the same industry, and that customers might reasonably assume your product is another offering from the same company.
• You don’t need a lawyer to ask for more information.
• You can get a lawyer or at least someone familiar with law to take a look at your letter after you write it. I am pretty sure I have seen several free or low cost websites that do this.
• Free small business mentoring sites score.org (US) and www.mentorsme.co.uk (UK) can also be a great resource for reviewing a response letter.

Answer 7880

• posted by: Denis de Bernardy on 2015-11-18
• score: 1

cease and desist from a foreign company operating in vaguely the same space, due to both of our names/logos featuring the same adjective.

IANAL but FWIW this has frivolous written all over it.

Unless they’ve the trademark in the UK, they’ve basically no case to begin with.

It is very unlikely that they have a trademark at all because adjectives are generic words. I gather there’s more in your logo or tagline than a mere adjective, and that this more is different enough to not allow confusion, making their point moot.

And even if they did have the trademark, they’d need to convincingly make the case that their activity is so close to yours that your respective clients may end up confusing the two.

If you decide not to ignore them, introduce by saying their request doesn’t make much sense to you, and proceed to ask them to clarify the precise trademark that you’re infringing in their opinion and how. Phrase it in a “say again? no idea what the problem is or what you’re talking about” kind of way. This will require them to state their precise case in writing so you can make best use of an attorney.

---

All content is licensed under CC BY-SA 3.0.