Wow! It’s hard to believe we’ve been defending the “No Fee Guarantee” (NFG) trademark against infringers for three years now. We sent our first cease & desist on February 12, 2010. Recently, we received confirmation from the 151st firm we had identified as an infringer. They conceded to our IP ownership and fully recognized our federal registration. 151 is a great milestone, but we’re not done yet…
If you’ve ever wondered how we do it, there are two words that describe it best — PROCESS and PERSISTENCE. The process begins with three basic ways we identify possible infringers:
- We perform bi-weekly, intensive internet searches for the term in various forms related to the legal industry,
- We constantly monitor our competition’s creative through our national AdScope program,
- We receive reported sightings from our clients and friends of the agency
Once identified, we reach out to serve notice of a firm’s unauthorized use is fairly consistent — a cease & desist correspondence. Persistence then takes over:
- We keep soliciting a response until three letters have gone unanswered,
- The fourth correspondence comes from our trademark lawyers.
Typically, one or the other will get the job done. However, our letters have not always been efficient and effective.
Back in 2010, the first few cease & desist letters where basically of the standard type. They were straight to the point. They identified the firm, the media platform used, outlined cj’s ownership and registration and demanded they cease use immediately. While not offensive by any means, the language was very lawyerly and was sent by our trademark counsel at the time — a lawyer to lawyer demand. You can imagine the reception…and response. Our progress toward compliance with firms ran at a snail’s pace. Regardless of the level infringement, it seemed an argument would ensue based on the tone of the letter. At least, that was my perception. So, to combat the problem I asked to take over sending the letters. I changed the tone to be one more of an informative nature. The opening paragraph goes like this:
“We assume you are unaware that cj Advertising, LLC owns and uses the trademark NO FEE GUARANTEE for legal services and advertising agency services directed to law firms. The NO FEE GUARANTEE is recognized as identifying our services and distinguishing them in a unique way from those of other personal injury law firms.”
We eventually demand they cease use, but that simple change to say “Hey, you may not know this, but…” seems to have made all the difference. We are less accusatory, but still firm in our conviction. We’re not looking for a fight, but will nonetheless vigorously defend our intellectual property rights.
We’re at 151 and counting. Our compliance program is more active and stronger than ever. We sincerely appreciate those who help identify unauthorized users of the “No Fee Guarantee.” Keep your reports of sightings coming! It’s a tremendous advantage in our compliance efforts. We’ve won many infringement battles, but the war still rages on…
