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Response to C&D Letter

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SFBayArea2005

Junior Member
What is the name of your state?What is the name of your state? California

However, our company was formed in Colorado. We've received a C&D letter from a jewelry company in Maryland that sells jewelry and has a trademark on the company name under the classification: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes: jewelry, precious stones; horological and chronometric instruments. We've filed for a trademark registration for our name under a different classification for our products, which are ties, under the same name. The C&D letter states that we are guilty of: unfair competition under federal and state law, false designation of origin, false advertising and trademark infringement. Our position is that, while we have the same name, we sell different products, are located in different areas, and that it is unlikely that "ordinary purchasers buying with ordinary caution" will likely be confused. In addition, we conducted a own research and noticed that there are several companies existing across the country with this same name, each in different service/product sectors, including a dating service that has the same name and owns and operates it from a website of the same name. My question is, what is the likelihood of being able to defend against a C&D letter in a situation like this, when you are dealing with a product of a different classification? In addition, when we googled the name, several dozen options came up, none of which was this company in MD.
 


divgradcurl

Senior Member
My question is, what is the likelihood of being able to defend against a C&D letter in a situation like this, when you are dealing with a product of a different classification?
A Cease and Desist letter is just that -- a letter. You don't need to "defend" yourself against the letter -- you can ignore it, or respond, or whatever -- it's not a court document. A cesae and desist letter can be anything from a fishing expedition -- just seeing if they can get people to buckle -- or it could be a prelude to litigation for trademark infringement. Unfortunately, you don't know the answer to this question now...

If the facts are as you say they are (and I'm not challenging you or anything, it's just that sometimes facts get spun or left out in these short posts), then it doesn't sound like they have much of a case for infringement -- but any changes to the facts could change this guess. You're best bet is probably to take all of your research and information down to a local attorney who can draft a reply stating why there is no infringement (if that is indeed the case) -- you could do it yourself, but it will be stronger coming from an attorney, plus there may be other benefits as well (no finding of "willful" infringement usually if you have opinion of counsel stating no infringement).

That way, if this is just a fishing expedition, that should shut them up. If it is more than that, well, then you'll need a lawyer anyway, so might as well get to know one now!
 

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