Cease & Desist FAQ

Trademark and Domain Name Cease & Desist FAQ

1. What is a Cease & Desist letter?
A Cease & Desist letter is a letter sent to one party usually by another party's lawyer. These letters generally allege that one party has violated the law and that legal action will be taken if they do not stop their illegal actions.

2. What does "without prejudice" mean?
"Without prejudice" is a statement made that the rights and privileges of the parties involved will not be lost.

3. What is a "trademark?"
Trademarks are words, numerals, symbols, colours or designs used to identify the goods or services of one organization from another. Trademarks must be displayed or advertised when services are provided and must appear on the packaging of goods throughout the normal course of trade. A registered trademark is also usually followed by ?.

4. What is a "common law trademark?"
A common law trademark is protected under common law and is it also well known to be associated with a particular good or service. Common law trademarks are usually followed by ....

5. What type of mark cannot be trademarked?
Generally you cannot register a word as a trademark if it is descriptive. An example of an unregisterable trademark would be "airplane" for an airline company. Airplane is a descriptive, generic term of the services an airline company offers and cannot be trademarked. Other types of marks that may not be trademarked are: people's names unless the person can prove the name can be identified with certain goods or services, official government symbols, plant species, the use of protected geographical locations on wine and spirits, and obscene, scandalous or immoral subject matter.

6. Can the right to a trademark be lost?
The right to a trademark can be lost or abandoned if a party does not use the mark for a period of time with the intent not to resume using it. A trademark can also be lost if it is becomes generic or common to a majority in the public, in cases such as these, the marks are no longer considered trademarks and not protected as trademarks.

7. What is a domain name?
A domain name is an internet protocol address or alphanumerical designation which is registered by the domain name registry. An example of a domain name is: www.dnattorney.com

8. What is the Trademarks Act?
The purpose of the Trademarks Act is to prevent unfair competition and the misappropriation of intellectual property.

9. What should I do if I receive a Cease & Desist letter?
Generally Cease and Desist letters are initially sent to urge another party to cooperate or face legal proceedings. Upon receiving a Cease & Desist letter, carefully read through the letter and the accusations against you then seek legal counsel.

10. What are Cybersquatters?
Cybersquattering is the registering of a domain name in "bad faith" with the intent to profit. Cybersquatters obtain domain names that correspond with pre-existing trademarks with the intention of selling the domain names to the trademark owner at a grossly inflated price.

11. What is ICANN and What does ICANN do?
ICANN is the Internet Corporation of Assigned Names and Numbers. They assist persons who wish to assert a right over a domain name by filing a complaint. This process is an alternative to going to court. ICANN also assigns unique identifiers for the internet such as IP addresses, domain names and protocol ports and coordinates the operation of the Domain Name System root server system.

12. What to do if you want to file an ICANN complaint?
Respondents have to participate if a complaint is filed against them. When filing a complaint you have two options: taking the issue to court, or filing a complaint at ICANN. To file an ICANN complaint the party must first carefully read through "The Rules for Domain Name Dispute Resolution Policy" and visit the approved dispute resolution provider which is found at: http://icann.org/dndr/udrp/approved-providers.htm the party must then select the appropriate provider and follow the instructions provided; in terms of the World Intellectual Property Organization's rules, the party initiating the complaint must send a copy of the complaint to the respondent along with the "Complaint Transmittal Coversheet" and another copy to the WIPO Arbitration and Mediation Center and the concerning Registrar. The WIPO Center upon receiving the complaint will send a copy to the Respondent with the "Complaint Notification Instructions."

13. What does it mean when the complainant states that you have "acted in bad faith?"
When a complainant says that a party has "acted in bad faith" it means: that the party has registered the domain name for misuse, such as: the purposes of selling it to the complainant or competitor at an inflated price, to prevent the trademark owner from using the domain name, to deliberately disrupt the business of a competitor, or to deliberately attract consumers by falsely portraying a connection or confuse consumers.

14. What does the term "confusing similarity" mean?
The term "confusing similarity" means if a trademark is similar to another pre-existing trademark that offer the same goods and services, there is a likelihood that the trademarks and products will be confused among members of the public.

15. What is the UDRP or CDRP and what does it do?
The UDRP is the Uniform Domain Name Dispute Resolution Policy and the CDRP is the Canadian Domain Name Dispute Resolution Policy. These are policies put in place to aid those who have experienced cases of "bad-faith registration" of domain names in a relatively quick manner. UDRP is established for .com top level domain names and CDRP is established for .ca top level domain names.

16. What is a "copyright infringement" and what can have a copyright?
A copyright infringement is an unauthorized use of copyrighted material. Copyright material consists of tangible forms of unique literary, dramatic, musical or artistic works.

17. What is "fair dealing" and what is "fair use?"
In copyright law, specific institutions and organizations are permitted to use materials that are copyright. "Fair dealings" in Canadian copyright law, are those organizations that are not the copyright holders but are permitted to use copyright material provided that they do not use it for profit. "Fair use" is similar however it is under American Copyright law and states that copyrighted materials can be used for "transformative purposes" such as commenting upon, criticizing or parodying.

18. What is an Intellectual Property Infringement?
Intellectual Property Infringement occurs when a claim is made against a party stating that the party violated trademark or copyright laws.

Sources:

1. Burshtein, Sheldon. The Law of Domain Names and Trade-Marks on the Internet. Toronto: Thomson, 2005. 1-1-1-6.
2. "Copyright Law." Canadian Internet Policy and Public Interest Clinic. 2 June 2007. University of Ottawa. <http://cippic.ca/index.php?page=copyright-law>.
3. "Cybersquatting: What it is and What Can Be Done About It." NOLO. 2008. <http://nolo.com/article.cfm/objectID/60EC3491-B4B5-4A98-BB6E6632A2FA0CB2/111/228/195/ART/>.
4. Larson, Aaron. "Trademark Law." ExpertLaw. Sept. 2003. 6 May 2008 <http://expertlaw.com/library/intellectual_property/trademark_law.html>.
5. Muscovitch, Zak. "A Guide to ICANN Procedure and Policy." Internet and E-Commerce Law in Canada 1 (2000): 37-40.
6. "Overview of Trademark Law." Harvard Law School. 3 May 2008 <http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm>.
7. Pollick, Michael. "What is a Cybersquatter?" WiseGEEK. 2008. <http://wisegeek.com/what-is-a-cybersquatter.htm>.
8. "Rules for Uniform Domain Name Dispute Resolution Policy." ICANN. 24 Oct. 1999. <http://icann.org/dndr/udrp/uniform-rules.htm>.
9. Vaver, David. Intellectual Property Law:. Toronto, Ontario: Irwin Law, 1997. 173-235.
10. "What is Fair Use?" Copyright and Fair Use Stanford University Libraries. 2007. Stanford University. 9 May 2008 <http://fairuse.stanford.edu/Copyright_and_Fair_Use_Overview/chapter9/9-a.html>.
11. "World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy." World Intellectual Property Organization. 1 Dec. 1999. 9 May 2008 <http://wipo.int/amc/en/domains/rules/supplemental/index.html>

Written By: Natalie Ledra
Date: May 9, 2008

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