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Ed Turner
Ed Turner,
Category: Law
Satisfied Customers: 1910
Experience:  Director and Consultant Solicitor (Self-Employed) at Ed Turner LLB Limited
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I have a reseller account with a hosting company. A website

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I have a reseller account with a hosting company. A website I host is being accused of trademark infringment. If I am sent a cease and desist letter, what is the correct action to take? I think it should be sending it to the client who has the website, and for them / their lawyer to deal with.
JA: Have you talked to a lawyer about this? In which country do you live? If different, which country is your legal question related to?
Customer: I live in the UK, but the client is based in the US
JA: What steps have you taken so far?
Customer: I have advised the complainant to send a copy of the cease and desist letter, as he has just threatened that so far.
JA: Is there anything else the Lawyer should know before I connect you? Rest assured that they'll be able to help you.
Customer: No
Customer: replied 13 days ago.
File attached (MVM3MGT)

Hello.   I am Ed, a Solicitor qualified in England & Wales with over a decade’s experience in the legal profession advising clients.

I specialise in Commercial Contracts, Business Transactions, Employment, Dispute Resolution, Personal Injury and Road Traffic Law and shall be reviewing your legal problem today.

Regarding the site’s automatic offer of a Premium Service Phone Call, I shall be delighted to talk with you by phone to discuss your issue in greater detail if you accept the offer.

However, if you do not want a phone call, please cancel the offer for a Premium Service Phone Call and you will not be charged extra.

Customer: replied 13 days ago.
Hi Ed, thanks for your message. I'd be happy to just continue in the chat rather than having a phone call.

It appears that the other party has served you with a “Cease and Desist and Takedown” Letter reserving their rights under their registered trademark.   The two products must be sufficiently similar that they would cause a risk of confusion in the minds of an onlooker.   The trademark owner does not have to prove intention to copy, only that the two designs are similar and theirs is protected by trademark and was registered first.

Unfortunately, I believe that you will have to remove the other party's work from your website.

Registering a piece of Intellectual Property as a Patent, Trademark or Design Right means that it is automatically protected from all other similar designs and the Right Holder does not have to prove deliberate copying by the other party.

Therefore, any argument by you that you came up with the design first will not succeed.   You should have registered it as a trademark to gain protection.

Damages for Intellectual Property Rights Infringement Claims are account of profits to the claimant for monies obtained through use of the mark.

You have two options.

You can either continue to use the design and risk the claimant issuing proceedings for a court injunction ordering you to remove the offending material, plus damages, interest, and costs.

Or you can remove the offending material and sign an undertaking not to use it in future.

Customer: replied 13 days ago.
In case it is helpful, I have checked on the trademark - my client does own the trademark, as evidenced here: https://tsdr.uspto.gov/#caseNumber=74161874&caseType=SERIAL_NO&searchType=statusSearch

I hope this resolves your enquiry.   Please revert to me if you require any clarification of my answer to your question and I shall be delighted to assist.

Kind regards

LawyerEd

Customer: replied 13 days ago.
The person who has served the cease and desist left the band in 2019, but is claiming he owns the trademark - but as you can see on that link above, he does not. He just has paperwork that says the mark was going to be transferred to him but that was never actually filed, and was only for a 2 year period (which has now passed).

In that case, you need to deny any IPR claim on that basis.

Customer: replied 13 days ago.
Would that be something my client would need to do, rather than me? (In other words, as the person hosting the site, I could go back to the complainant and say that I've been advised that the client owns the intellectual property, and any further action must be taken against them directly?)

Yes, that is correct.

Customer: replied 13 days ago.
Ok, great. So really, the fact that this person is contacting me is not the correct way to handle things - it should all be done directly to the client themselves? And even though he is threatening to badmouth me all over social media etc for hosting the website, I should just ignore that because I'm not in the wrong?

Yes, the claimant should direct the letter of claim to your customer.

Ed Turner and other Law Specialists are ready to help you
Customer: replied 13 days ago.
Ok, thank you. This is what I thought should be done, but this claimant keeps threatening to take legal action against ME as well, but it's the client who should be dealing with all of this.