South Carolina Intellectual Property Litigation

Intellectual Property & Litigation SC

Trademarks / Servicemarks / Branding / Cease-and-Desist Letters

For most of our clients, your needs have to be in South Carolina, or closely related to the state, for us to be able to serve you. With trademarks, however, we represent many clients outside of the state of South Carolina. This is because of the U.S. Patent and Trademark Office’s very attractive registration process, and the nationwide rights granted to a registered trademark or servicemark.

1. How Can You Protect Your Company / Product Name?

As mentioned above, registration of your company name, product name, or tag line as federal trademark is ideal if it can be obtained. Many businesses in different states, however, use the same or similar names for the same goods and services, which can make a federal registration difficult to obtain and pursuing it may cause you to get into an otherwise avoidable dispute. The good news is that there are steps you can take other than seeking a federal registration. Below are the primary options:

  • federal trademark registration – some benefits include right to injunctive relief, nationwide protection, incontestable status, attorneys’ fees, federal court jurisdiction, and more;
  • state trademark registration – typical benefits include right to injunctive relief, presumptions of validity, and attorneys’ fees;
  • common law rights – by using a name in commerce, you already have some common law rights, but there are other steps you can take to preserve and protect your common law rights in a name.

2. What To Do If You Received a Cease-and-Desist Letter?

First off, don’t ignore it or you may end up being sued and be required to pay the other party’s attorney fees, lose the right to use your name or brand, and more. If you receive a cease-and-desist or a nastygram, you need to seriously consider the rights alleged by the sender or their attorney, and the rights you have in your name based upon the first use in commerce and the good or services associated with it, in comparison to the rights of the party sending the letter.

It is not unknown for someone to have their attorney send a cease-and-desist letter only to discover that the recipient had been using the name before the sender. In summary, if your business receives a letter accusing you or trademark infringement, in most all circumstances, you should have an attorney with experience in the field of trademarks review the letter and advise you of your rights and options. In some circumstances, however, the recipient of the letter may be stuck and have really no options but to cease-and-desist use of the name as requested.

Unfortunately, most business have at least tens of thousands of dollars tied up in their names and some will have great difficulty re-branding, either due to costs or fear of losing their existing customers.

3. How Can We Help You?

If you have concerns that your company name is not protected as well as it could be, we can:

  • consult with you regarding your options, including pursuing
    • federal registration on the principal register;
    • federal registration on the supplemental register (descriptive marks);
    • state registration options; or
    • increasing your common law rights in your trademark or brand.

If you think another party is using a mark or brand that infringes upon your rights, we can:

  • advise and consult with you on your options, including:
    • sending a cease-and-desist letter;
    • filing a lawsuit seeking an injunction, damages, and attorneys’ fees;
    • writing letters to third-parties, such as websites, where an infringer is using your trademark asking them to take down the infringing uses; or
    • evaluate many other options depending on your particular situation.

If you have received a cease-and-desist letter, we can:

  • assist you in responding to the letter, and hopefully reaching an agreement that you do not infringe or an agreement for concurrent uses of the marks; or
  • file a declaratory judgment action against the party sending the letter; or
  • evaluate other options, including re-branding, if necessary.

If you or someone you know thinks they have the need to address any of the trademark related matters discussed above, contact our firm at 864-527-5906.