How to Respond to Cease & Desist Letters

by Richard Rimer | Nov 6, 2023 | Office Actions, Cease & Desist, Infringement, Education

How to Respond to Cease & Desist Letters

Demand Letters. Cease & Desist Letters. Notice Letters. Threatening Letters. Whatever you call them, a letter saying that you may be infringing someone else’s brand rights is difficult to receive. You need to take these letters seriously because the sender could make you change your name and take your profits. I am introduced to many clients after they have received one of these letters. While I can’t make the problem go away, I can use my experience to find the best possible outcome to the situation.

One common problem I see is that small businesses frequently don’t understand what the issue is. Many people think the letter is saying “you purposefully did something bad.” This is not the case. Trademark infringement does not require knowledge or intent. It’s simply enough if one brand is likely to be confused with another. Put another way:

IT DOESN’T MATTER IF YOU DID NOT PURPOSEFULLY DO SOMETHING WRONG.

What to Do After Receiving a Cease & Desist

1. One of the first actions you should take is to determine what the sender is alleging. Is the problem that your brand is too similar to theirs? Maybe it’s because you both sell in the same state. It could be the new products you started selling. Whatever it is—what do they think the problem is?

2. Next, you should understand what rights the sender has. The letter likely contains a brief summary of their rights, but you should verify these. Are the rights registered? What brand(s) are they using? What goods/ services do they sell? Where do they operate? When did they start? All of this may impact the outcome of the situation.

3. You should then fully account for your rights. Mainly you want to understand if there is overlap between your use of your brand and their use of their brand, and confirm that your use is newer than theirs.

4. Now it’s time to begin the legal analysis, followed by making business decisions. Maybe we determine that the problem is that you sell widgets in Delaware. In this case, the solution may be as simple as stopping this limited activity.

We Can Help!

Receiving these letters can be difficult, but you should not ignore them. You also should not try to respond yourself. Contact an attorney with trademark law ®️ experience and let them help you through this. I welcome your call, and am happy to start with a free consultation.

Halloween Special – Costumes and Infringement

by Richard Rimer | Oct 31, 2023 | Infringement, Other

Costumes and Infringement

What’s scarier than watching vampires, ghosts, werewolves, zombies, etc. parade down your street tonight?

Seeing lawyers chasing them to hand them cease and desist letters! Costumes are full of intellectual property concerns so I thought this would be a fun topic for Halloween. However, It would be highly unlikely that someone wearing a costume could be sued for infringing on the rights from a movie, book, etc. After all, suing someone for infringement is a business decision. Accordingly, there are people who are more at risk. This includes people selling knockoff costumes and people making money from wearing a costume (think impersonator).

Clothing is generally not covered by copyright law, but like most areas of the law, there are exceptions! The first being that parts of clothing which are physically or conceptually separate from the clothing can be subject to copyright protection. Making a costume that looks like a famous character could expose you to a claim of copyright infringement.

Is Your Costume Infringing on Someone’s Intellectual Property?

I’m having a flashback to the Jaws costume I wore in the 70s. Cue the John Williams main theme. Part of my costume had a picture of the shark swimming towards a woman on the surface. That picture was conceptually separable from the costume and could be considered infringing. Unless, of course, the costumer maker got a license to use it. The second exception relates to masks and other accessories, which are generally subject to copyright law. Hopefully the maker of my old costume also got a license for the shark face mask that came with it!

Once you’ve cleared the copyright hurdle, you need to clear the trademark hurdle. This often will come into play when you look at the name of the costume. For example, I could create a “Scary Shark” costume today without a license. But, I would need a license to call the same costume “Jaws.” There is another layer of liability if the costume looks unmistakably like a famous character. And don’t forget the third layer of liability; If you sell services while wearing a costume similar to a well-known character (are you listening, faux Disney princesses who entertain at kids’ parties?).

While this topic is about costumes, it also demonstrates how copyright and trademark often cover the same item in a different way. This likely includes items you use in your business. The story also demonstrates that there is both an offensive and defensive position to both areas of law. I encourage you to think through your business and ask if you have any opportunities to make your business stronger.

Registration Can Prevent Legal Issues

by Richard Rimer | Sep 25, 2023 | US Registration, Education

Does Changing Your Name Cause a Legal Issue?

I want to tell a story highlighting how important registration is for your business. Stanley Ralphson and Zach Gilbright have known each other for more than 60 years. They were neighbors who met at age 3 and remained best friends through high school. After stints in the military (Stanley) and college (Zach), they reconnected when both moved back to their hometown. Like many 20 somethings, they each had a job which paid the bills but didn’t create joy. One night Zach said, “why don’t we start our own company?”

That was the birth of Ralphson and Gilbright. The company started as a materials distributor for commercial general contractors, but soon morphed into a specialist in the commercial siding business. The company stayed local so they could continue the same level of service. They had many loyal customers, many of whom called the company Ralphson or R&G.

Registration is Preventative

After 40 years of owning R&G, Zach decides to retire. Stanley buys Zach’s half of the business, and he has plans to make a few changes so he can pass it down to his kids. One change is the name. He wants the company to be named Ralphson. That’s ok, isn’t it? Stanely then hires our firm for brand protection. A quick search shows that a company located on the other side of the country named Ralphson is selling commercial roofing supplies. This newer company received a federal registration for “Ralphson.” This would not have been an issue if they had registered Ralphson and Gilbright years ago.

This could easily pose a problem for Stanley. While he *may* be able to prove that he has rights to use Ralphson as a company name in his current territory, he may not be able to use the name outside of this zone. Now he is in the weird situation of having to either 1) not use his name or 2) negotiate with the bad guys to be able to use his name. You do NOT have an absolute right to use your name as the name of a company. The moral of the story is: perform searches, act early, and don’t let your rights be taken by another business! Registration is key.

Stanley is lucky he searched BEFORE the name change—this search may have saved him hundreds of thousands of dollars.

Brand Protection and College Football

by Richard Rimer | Sep 22, 2023 | Brand Protection 101, Infringement, Education

Brand Protection: Cheering Without Infringement

Football season is in full swing. You’ve probably noticed people wearing shirts, hats and many other items bearing the logo of a favorite team. Here in the south, there’s a good chance that team is a college team. During my career I’ve had many questions about what can and can’t be made without a license. The people asking are not large companies— they tend to be moms wanting to make hair bows or costume jewelry for craft shows or dads decorating their cars. Surprisingly, the answers for brand protection rights for college sports are different.

Like with any company, you cannot use the brand names, logos, taglines and other source identifying items belonging to a college. What is somewhat different is the use of colors. The general rule is that you cannot use the colors of a school plus any item that identifies the school. For example, I can’t make shirts that are red and black and say “Cheering with my 92,746 best friends,” because that clearly refers to the University of Georgia and its football stadium’s seating capacity. Colleges have brand protection rights even when it comes to things like t-shirts or bumper stickers.

NIL Is The Latest College Football Stat

College football fans everywhere are spending their Saturdays watching games and the entire week devouring information about their favorite team. While a lot of this information involves on-field activities like who is injured or who is the newest phenom, some of this information involves relatively new off-field news. One relatively new element in college football is NIL. This is an abbreviation for “name, image and likeness,” and it refers to athletes being able to get money from companies for endorsing their products.

NIL is in a “wild west” period right now. The Supreme Court ruled in 2021 that colleges can’t prevent athletes from making money from these NIL rights. The 2021 season was really wild as very few teams, conferences, states, etc. had found ways to manage this new reality. The past seasons have seen the development of some framework, but there is little consistency. I’m happy that athletes can now profit while in college, but I’m looking forward to uniformity.

If you are curious about NIL rights when it comes to college sports, see this article by the NCAA.

UGA’s “G” Logo

Does your business want to use NIL rights to promote its products or services? Let’s talk. Many of you know I am a big fan of college football, and specifically UGA, my alma mater. Georgia’s football team has gotten a lot of attention recently, having won the last two national championships. This success has drawn the notice of football fans, including pro fans and fans from outside the southeast. One of the first questions people ask is: isn’t Georgia’s “G” logo the same as Green Bay’s logo? Well, here’s the story:

The Packers created their logo in 1961. An equipment manager designed it to look like a football, with the “G” meaning “Green Bay.” A few years later Vince Dooley ordered a redesign of Georgia’s uniforms. His idea was to have a black G on a white background on the helmet. A coach’s wife was chosen to help with the redesign and created the G logo we know today. UGA’s dimensions and colors were different, but they asked the Packers for permission anyhow. Green Bay granted its permission. Georgia’s G is slightly slimmer in comparison to the Packers’ G and has remained the same. Green Bay’s logo was slightly altered to have a gold border in 1980.

Do you want to use a logo similar to an existing logo? Call me and we can discuss how to make this happen.

Your Business Name is Too Descriptive

by Richard Rimer | Sep 20, 2023 | Brand Protection 101, Education

Is Your Brand is Too Descriptive?

Most people know that you cannot start using a brand that is too similar to an existing company’s brand. What most people don’t know is that some brands are “stronger” than others. The whole purpose of a brand is to be distinct, not descriptive. That is, it should stand out such that consumers understand that it clearly indicates who made that product (or is offering that service). This means that more distinct brands are stronger than less distinct brands. Keep reading to find out why descriptive brands are not your best bet.

On the other side, brands that don’t stand out are “weak.” Weak brands include words that describe the good/ service or are incredibly common. The law gives great protection to strong brands, and much less protection to weak brands. Therefore, choosing a strong brand should be a top priority. Many companies ignore this advice. They instead think “it will be easier for me to sell things if my name explains what I sell.” That is, they exchange a protectable identity for a lifetime for easy sales early on. Descriptive brands and common words (e.g., “Federal”) do not serve this purpose and are given a lower scope of legal protection. Descriptive brands come in three main flavors: words which are descriptive based on their ordinary meaning, last names and place names.

The most common type of descriptive brand is those which simply describe a characteristic of the good or service being sold. A great example of this is The Honeybaked Ham Co. Just look at the name and there is no doubt what it sells. Brands which use a last name are also descriptive. An example might be Jones Plumbing or Morgan & Morgan. Finally, brands which use geographic place names are descriptive. Arizona Iced Tea or Corning Ware might be examples of this. Please note that if your brand includes different types of descriptive terms, it is still descriptive. Thus, Arizona Iced Tea is likely descriptive as it contains both a geographic place name and ordinary descriptive words.

It’s Official.

That brand name you’ve been using is descriptive (and/or super common). Descriptive brands aren’t given much legal protection, so what can you do to enhance your legal rights in your brand? The first common solution is to add a distinctive element to the brand. Maybe you can include a design or a word that is not descriptive. One downside is that you will still have limited rights over the descriptive words. For example, while Morgan & Morgan can make me stop using “For the People,” they cannot stop me from using the last name “Morgan” (Visit my other post for more on using a last name for your business).

Another solution is to show that your long standing use of the brand has conditioned consumers to no longer see your brand as a description. This is not easy, but it creates a brand that is as fully protectable as others. (The Honeybaked Ham Co. took this route.) Some of these brands spend time on the Supplemental Register to get here.

A final route is to show that the terms will not be viewed as descriptive. Arizona Iced Tea did this by proving that people do not associate “Arizona” with iced tea, thus there is no place/ name association.

So, You Have a Decriptive Brand

You’ve discovered that your brand is descriptive. Your idea to call your business “Milton’s Social Media” sounded good several years ago, but you have a brand with limited legal rights. I discussed several ideas for “lifting” your brand from the depths of descriptiveness, but when do you do this? My recommendation is that you do this NOW. That is, unless you are so small and you don’t expect to ever be relevant, why should you stay stuck in the mire of a brand with limited legal rights?

If you can’t do it now, you should make it part of your next marketing spend. Having spent decades working for large companies, I know this is the time big companies typically go after small companies. The big companies aren’t being mean; they just typically don’t see smaller companies until they’ve done something to make them noticeable. Undergoing a marketing effort, opening new locations and launching new product lines are great examples of this.

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