Legal Question in Intellectual Property in Florida

Re: Cease and desist

PLEASE NOTE: WE DO NOT HAVE AN ATTORNEY-CLIENT RELATIONSHIP. THE FOLLOWING SHOULD NOT BE CONSIDERED LEGAL ADVICE.

In my opinion, yes, you still might be liable. I would suggest a settlement agreement or at least a letter from the cosmetic company saying that your actions satisfy them and they will take no further actiona against you unless you continue to sell under the same trademark.

Thanks your for question.

Todd D. Epp, Esq.

Lynn, Jackson, Shultz & Lebrun, P.C.

141 N. Main Ave., 8th Floor

Sioux Falls, SD 57104

(v) 605-332-5999 (f) 605-332-4249

Admitted in S.D., Kan., W. Dist. of Mo., and 8th, 10th, & 11th U.S. Cir. Cts of App.

Re: Cease and desist

Yes, you could have liability for any infringement in the past, even though you stopped immediately upon notice from the larger company. The best way to avoid that liability is to write the company and say you don't think you are infringing and do not admit infringement, but in order to save legal expenses you are willing to change names if they will (a) release you from any liability for past use of the name to which they object, and (b)pay a certain amount for your expenses in voluntarily switching names. If the name involved is identical to what the larger company registered or used prior to you and is on identical products, then the larger company will probably not agree to reimburse for changeover costs, otherwise they might. Still it is worth a try to get your costs back. The larger company may agree since that is cheaper than paying a lawyer and the result is more certain than in litigation and is under their control.

If you started using the trademark before the larger company, you ought to be talking to a good trademark lawyer as you may be able to turn the tables on the larger company and will almost certainly be able to obtain a payment if you switch names.

I am a very experienced trademark litigator, so I can help if you need more help on this.

Re: Cease and desist

Liability for damages turns on your intent when you adopted the mark. Damages and attorneys fees are not automatic for trademark infringement unless the other side proves that you willfully and/or deliberately infringed the mark. What is willful will turn on a number of factors such as whether you knew about them, whether you should have known, etc. Needless to say, it often takes a lawsuit to answer these questions which is probably what you and they want to avoid.

What does make sense is that you get an agreement from them acknowledgining that you have stopped the alleged infringing activity, that you don't admit any liability and then get a release from them for any alleged past infringement. Otherwise there is nothing that would prevent them from filing a lawsuit against you even though you have stopped using the mark.

I am an experienced trademark attorney in Texas. I would be happy to talk with you more if you have any other questions.