While it is true that not responding to a trademark cease and desist letter is always an available option, I tend to believe it is rarely a good choice. The strategy of silence seldom makes the issue go away, it often ends up costing the recipient more money to resolve the issue, and it is more likely to place the trademark enforcement target in a less favorable business and legal position in the end.

So, it is surprising to me how many recipients of trademark demand letters actually ignore or seriously consider ignoring the cease and desist letter and doing nothing. Perhaps more surprising is when I hear about lawyers recommending silence as a serious option, apparently hoping that the trademark owner isn’t serious, that it won’t smell blood in the water, that it will get tired of chasing the enforcement target, lose interest, and/or not follow through on its “trademark bullying” demands.

Instead, a more plausible reaction to the silent treatment comes from a now highly agitated and frustrated trademark owner who files a federal district court trademark infringement complaint, who may then obtain a default judgment, permanent injunction, order to pay damages, order to pay the attorneys fees of the trademark enforcer, and even seek a contempt of court order for failure to honor the previous court orders.

Of course, one of the serious pitfalls of choosing silence is that it forces others (both adversaries and the court) to fill in the blanks, and it actually can speak volumes, perhaps communicating incorrect and/or very unintended messages to the trademark enforcer:

  1. I will both run and hide from facing responsibility for my actions;
  2. I can’t be trusted and I don’t operate a reputable business;
  3. OK, I’m guilty and I have no valid defense to your trademark infringement claims;
  4. I actually intended to confuse consumers and benefit from that confusion;
  5. In fact, I’m profiting nicely from my actions while unfairly trading on your goodwill;
  6. I don’t care if my silence ends up costing you more time, effort, and expense;
  7. I’ll call your bluff and simply dare you to sue me;
  8. If you sue me, I’ll ignore that too; and
  9. Maybe I can’t or won’t afford to respond or defend myself or my company.

While the last listed possible message above may, in fact, be the only truly correct interpretation of the silence, unfortunately, communicating it tends to mimic blood in the water with a nearby circling shark. Far better to leave your resources a mystery while conveying an intelligent, serious, and direct written response (assuming there is a valid defense to the demands). Doing so will go a long way toward dispelling anyone’s reasonable belief of the other possible eight messages.

While there is no doubt that sole business owners and entrepreneurs can have limited budgets, it is hard to believe they are unable to afford at least one intelligent response by an experienced trademark attorney.

In my experience, nothing beats a prompt and intelligent response that details the weakness or baseless nature of the trademark infringement claims asserted in the demand letter. But, I’ll save for another day my thoughts about the actual anatomy of an intelligent trademark response letter.

In the meantime, where do you stand on the issue, do you favor and/or recommend silence or a detailed response to trademark cease and desist letters?

  • About the only decent reason I can think of to not respond is, you consider the claim to be frivolous trademark bullying and you want your day in court.

  • I can’t ever imagine advising a client to ignore a letter, if for no other reason but the concern that the client gets sued and our relationship is soured. Advising a client to ignore a letter based on circumstantial evidence such as differences in geography between the opposing client and its law firm seems way to risky (especially when that advice is dispensed over the Internet without consideration of the particular facts of the case (what are you to think if the opposing client is a Delaware corporation with a New York City law firm?). A quick, courteous response is always better, even if it is simply a “we’re investigating this and will respond soon”-type letter.

  • Steve Baird

    Tim and Tom, thanks for sharing your insights and opinions.
    From my perspective, if you really consider a claim to be frivolous trademark bullying, to maximize what you might be able to accomplish when having your day in court (i.e., obtaining a attorneys fee award), you’d be well-advised to lay it all out in painful detail up front in a demand letter response, so you are able to beat the drum over and over that the plaintiff was shown the case was frivolous before suit was filed but proceeded anyway.
    My additional two cents.
    Thanks again for sharing your thoughts.

  • Ignoring? No.
    Fight or flight.

  • ditto, Bob