I recently published an article detailing the importance of seeking federal trademark registration and the rights that come with being the recognized owner of a brand, one such being the exclusive right to use the mark in commerce as it relates to the brand’s goods and services. Such privilege provides trademark owners not only the ability to put any person or company throughout the United States on notice of the existence of your mark, but also the power to demand that such person or company immediately discontinues providing the same goods or services under an identical or substantially similar mark. How, do you say? Through every lawyer’s favorite tool – the Cease and Desist.
What Is A Cease And Desist?
A Cease and Desist letter alerts the receiving party that it is currently engaging in unlawful behavior that must be stopped, or potential legal action will ensue. With trademarks, the alleged illegal activity is trademark infringement and unfair competition, stemming from the receiving party (1) copying the owner’s brand to provide the same or counterfeit goods or services, and (2) attempting to palm off the trademark owner’s goodwill and reputation associated with its brand. The copycat mark does not have to be identical for the trademark owner to enforce its rights; so long as the marks could be considered similar to the extent there exists a likelihood of confusion with the average consumer as to the source of the goods and services, the trademark owner has a pursuable claim.
The Effects of A Cease and Desist
Let’s say you’re the owner of “Elevation Fitness,” and have applied for use of that trademark as the brand name for your dream chain of gyms throughout the US; you’ve invested blood, sweat, and significant capital in order to successfully launch your first location in South Florida, attracting numerous clients and maintaining a pristine image in support of your vision. One day, you come across an “Elev8tion Fitness” operating in New York, a grungy gym with several 1-star reviews.
While you may think the slight difference in name is enough for consumers to discern between the two, this example is a prime reason why the cease and desist exists. Not only does demanding that “Elev8tion” stop using a substantially similar name prevent gym-goers from boycotting “Elevation” because a friend told them about a bad experience at “Elev8tion,” but it also prevents “Elev8tion” from attracting visitors actually seeking to go to “Elevation.” Now you can open your second location in New York without fear of being the subject of negative reviews or lack of business resulting from a knockoff competitor.
The Importance of Goodwill
Your brand’s name, image, and reputation is everything. It’s what attracts customers and adds to the uniqueness of your product. Establishing a strong association between your brand and the consuming public is what allows you to entice individuals and businesses with new goods and services you may offer in the future. Brands that understand the importance of developing strong consumer connections – such as Apple, Barstool Sports, and Roc Nation – know that allowing others to undermine the goodwill developed through its respective goods and products only decreases overall value and profit, and you should too.
