When a cease and desist letter arrives, most agree it’s time to pause and determine the source of the dispute and the possible paths forward. Our client paused for a different reason: the background of the sender himself.
The Problem
An investment and advisory firm received a cease and desist letter regarding one of its trademark registrations and subsequently hired external counsel to review the letter’s reasoning and demands. The legal team reached out to 221B to request background information regarding the trademark attorney, the business he represented, and the business’ founder, explaining they thought something was “off” with the trademark attorney. External counsel also sought to understand the timeline of the relevant trademark registrations and denials.
Our Solution
221B began its public records research, focused on gaining a better understanding of the parties and trademarks involved. We quickly realized that while the opposing business and its founder appeared to be legitimate actors in the investment space, their trademark attorney—the sender of the cease and desist letter—also served as a city assemblyman in a major metropolitan area, and had previously been investigated by local officials for misuse of public funds. The attorney had also been sued in federal court for trademark infringement.
Our review of trademark registration and renewal records found that while the opposing business had indeed filed an application to register a series of trademarks in the mid-2010s, it had failed to file additional required documentation, and the US Patent and Trademark Office had abandoned its applications within a few years. During this time, we found that the trademark attorney—who presumably was responsible for filing the required documentation to move the business’ application forward—had been embroiled in a series of financial disputes, including consumer credit and collections cases, foreclosures, and breach of contract cases.
More recently, the trademark attorney filed updated trademark applications on behalf of his client, which were later denied due to “a likelihood of confusion” with other existing trademarks, including those owned by our ultimate client, the investment and advisory firm.
The Outcome
221B provided detailed background research on the parties involved as well as a visual timeline to help external counsel better understand the timing of relevant events, including when the opposing business filed its trademark applications and when they were abandoned or denied, particularly in relation to when the investment firm registered its trademark. Armed with this intelligence, external counsel was able to provide the investment firm a solid rebuttal to the cease and desist letter and ensure it could continue using its trademark.