Receiving a trademark cease and desist letter is always an unwelcome surprise for a business owner. The first step you should take when you receive a cease and desist letter demanding that you change the name of your business on the basis of trademark infringement is to contact a trademark lawyer.

A cease and desist letter will typically set out several demands, which may include ceasing use of a trademark on signage, websites, social media, domain names, and the like. It will also usually set out the basis for making the request, for example registered trademarks that are owned by the party complaining, and its earlier date of first use. It is critical for a trademark lawyer to review the letter so that you can make an informed choice moving forward.

Factors impacting how to best respond to a cease and desist letter will include which parties have registered trademarks, where the businesses are operating, how large the businesses are, how long the trademarks have been in use, and how the trademarks are being used.

Rebranding a business can be very expensive, but legal fees can of course also add up, so prudent business owners who do not have a strong legal case may decide to agree to change their name quickly.

An interesting recent example involved the Wellington Social House, which received a cease and desist letter from the Browns Restaurant Group. Rather than enter into a protracted legal battle, Wellington Social House announced that it will change its name, and has received positive press, very valuable for a new restaurant, for its handling of the situation. The Chilliwack, British Columbia restaurant ran a contest to come up with a new name for the restaurant on their Facebook page, and have shown that facing a cease and desist letter does not have to be fatal.