How to determine the validity of the letter
First, check who sent the letter. Remember that anyone can send a cease and desist letter, and an attorney does not have to be involved. The most common letters you will see are from foreign entities accusing businesses of misuse, for example, of an image and requesting immediate payment for damages. This is usually a red flag, and you need to further investigate the legitimacy of such correspondence.
Before making any payments, check exactly what image or item is being referred to and how you acquired it. Consult with an intellectual property lawyer if you believe there is a possibility of infringement.
When a letter comes from a legitimate law firm, it usually creates immediate concern. This does not automatically mean that you are at fault. Large companies with big budgets will stop at nothing to prevent companies with even remotely similar names from existing. A legitimate letter will list instances of any “possible” infringement. The more vague the wording and threats of a lawsuit are, the more likely it may simply be “trademark bullying.”
When can infringement be possible?
Photography, Videos, and Fonts
If you downloaded an image from Google and used it on your site, there is a probability that you might be using someone else’s intellectual property. You should take that image or video down immediately, regardless of whether that particular claim is legitimate. Always utilize photos and videos that you purchased a license for (from an online source or a photographer) or that you took yourself.
Also, check the limitations on your photography usage, even when the image has been licensed. Fonts used on your website may also have limits on the number of times the font can be displayed over a period of time (month or year). For websites with millions of visitors each month, the safest approach is to use Google Fonts, which do not carry limits on website font usage.
Trademark Infringement
Trademark infringement requires a “likelihood of confusion.” It needs to create a reasonable likelihood that an ordinarily attentive consumer would, upon seeing your name, believe that it is somehow the same company. A similar name does not automatically mean that you are infringing on a trademark.
Otherwise, two companies using the same word in their name would not be able to exist anywhere in the country, which is absurd. If your name is, for example, “Small Town Cookies” and you are a bakery, and you receive a trademark infringement letter from a company called “Small Town Dumpsters,” which registered its trademark under waste removal services, you are not automatically infringing on their mark. There is a very low probability that a customer would mistake your cookie business for a waste removal company simply because the names are similar.
However, if you start offering cookies, cakes, and waste disposal services, possible infringement may occur.
How to protect your business
When it comes to your business name, filing a trademark is well worth it. It is not as expensive as you may think, and requesting more information from a local intellectual property law expert is the first step. Include all your current classes of services and any additional ones you may offer in the near future.
Unfortunately, cases of trademark bullying are very common, and filing an application for federal registration of your name, logo, or both will provide peace of mind.
When it comes to photography, videos, and font usage, especially on your website and in digital advertising, always ensure that the source allows for the intended use. Although purchased stock photography may allow use in mass print, there may still be limitations on how many times an image can be reproduced. Make sure that any use carries the correct license.
Please note that this article does not provide official legal advice, and we always recommend consulting with an intellectual property lawyer to determine the best course of action.
