Last week, a client who is a business coach, received a cease and desist letter from a competitor demanding that she stop using “Financial Journey” for her program. The competitor alleged that they had a trademark registration for “Money Journey” and my client’s use of “Financial Journey” was infringing on their trademark registration.
My client first went into a defensive mode and then her emotions took over. She went into an emotional spiral where she thought she was dishonest and that she had done something wrong. A lot of people feel this way when they get a notice or a letter accusing them of some wrong doing. Mostly, the purpose of these letters is to provide notice of some action that has irritated or annoyed the party writing the letter. They cite legal basis for why they think the other party has acted in a wrongful manner. But they are merely assertions and notice. These letters not lawsuits and the issues raised can usually be resolved without litigation. And that is the purpose of these letters.
Remember, you are not wrong until a court of law says you are. And there are a list of factors that the courts consider to determine if there is infringement. It is not as simple as comparing the marks. Among the factors that the court considers are:
- Strength of the mark;
- Proximity of the goods;
- Similarity of the marks;
- Evidence of actual confusion;
- Marketing channels used;
- Sophistication of consumers;
- Intent in selecting the mark;
- Likelihood of expansion of product line.
Courts closely examine each of these factors based on evidence presented to determine if there has been infringement. So there is no need to have an emotional meltdown over a cease and desist letter. But you should consult an attorney before taking any action in response to the letter.
In her emotional state, my client also called her competitor to try and resolve the issue. But these conversations can sometimes be damaging, especially if you disclose confidential financial information or conversations with your attorney. There are many legal nuances that come into play once a lawsuit is filed and that’s when the damage resulting from these conversations can take effect. So if you receive a cease and desist letter, you should immediately contact an attorney to determine your course of action.
At Nupur Shah Law, we help business owners assert their rights in intellectual property and defend them against claims of infringement. I am happy to have a complimentary conversation with you on how to secure and/or defend your rights.