Defend trademark from cease and desist letters or oppositions

When you are using a trademark, as well as you are the owner of a filed or registered trademark, you could receive disputes. In this case it will be necessary to defend your trademark in the best way possible.

The most common trademark disputes

There are many kind of disputes, including, for example, a cease and desist letter or an opposition to a trademark or judicial actions, these latter argument not treated in this article

Cease and desist letter

Speaking in general, it is not possible to state all the grounds on which a cease and desist letter can be based, because they can be many.

A cease and desist letter, which is sent when it is believed that there has been a violation of the law, consists of an letter (usually a registered letter or PEC) that request that and individual or organization take an action or refraining from doing it, with a threat of the consequences that the failure to comply with the invitation could determine.

 Examples of requests you can find in a cease and desist letter are:

• Request to withdraw a trademark application claimed to be in violation of an earlier right;
• Request to cease using a trademark and to collect the goods bearing that trademark;
• Request to cease the use and/or modify other distinctive signs (for examples, company names, domain names), which are also assumed to be in violation of an earlier right;
• Request to formally undertake not to use nor file a trademark identical with or similar to an earlier trademark

How to reply to a cease and desist letter: the role of a consultant

In a cease and desist letter there may also be other requests and it is important that you evaluate them with your consultant, who can show you if the cease and desist letter is well grounded or not, if you have arguments for your defense and, in general, what is the best strategy to adopt for protecting your business.

Opposition to the registration of a trademark

Another kind of dispute is the opposition to the registration of a trademark.

If you have filed a trademark application, you could receive the notification of an opposition to its registration.

Legitimated subjects (for example, owners of earlier trademarks ) may ask the competent authority to refuse registration.

We remind you that to minimize the risk of receiving an opposition it is advisable to carry out a trademark search to find out in advance if your trademark is identical with or similar to an earlier trademark

How to reply to an opposition: the role of a consultant

If the opposition is filed to an Italian or EU trademark application, the deadline for the filing of the opposition is three months from the date of publication of the contested trademark.

The deadline for the opposition to a trademark filed in another State (for example, a US trademark or a Chinese trademark) can be different and it is important that you speak with your trusted advisor who will check the deadline and will study the opposition, deciding if it is well founded. It will highlight a defensive strategy and quantify your chance of success.