Copyrights cover a work, such as a picture, a painting, a literary work or a video, and trademarks cover a word, slogan, phrase, logo, image, or sound when used in connection with a good or service, such as wine or clothing. Although copyright and trademark can appear to overlap, they are separate and distinct types of protection. Ownership of a copyright on an image does not mean you own that image as a trademark, and ownership of a trademark that uses an image does not mean you own a copyright on the image.
Providers of goods and services often use descriptive terms, including geographic terms or place names to inform consumers about the origin, nature, or quality of their goods and services. Napa Valley is without a doubt one of the most recognized and highly regarded viticultural regions in the United States. So it is no surprise that wineries would go to great lengths to associate their wine with the Napa Valley appellation, even if their wine does not truly originate from there. Unfortunately for the Bronco Wine Company, their efforts to use the term “Napa” in their trademarks “Napa Ridge” and “Napa Creek Winery” were deemed to mislead consumers.
Cease-and-desist letters seem to have become the tool of choice among attorneys who want to provide notice of a claim and to initiate a dispute in the hope of resolving it in its infancy. However, and particularly in intellectual property disputes, attorneys need to consider several pitfalls before hitting the send button on a fax machine or e-mail screen: if you threaten to sue, can your client be sued in an inconvenient forum under Federal Declaratory Judgment Act? In Patent disputes, can you avoid a declaratory judgment action and still provide adequate notice of infringement, which is a prerequisite for obtaining damages if the client did not mark its product with a patent number? In how much detail should present your analysis and allegations in order to be convincing—without limiting your options or disclosing too much? Is it wise to tip off the recipient just yet, or should further investigation or preparations be undertaken? Should the letter also be sent to third parties, such as customers of an infringer, or would that constitute wrongful interference? To an intellectual property lawyer sending a charge-of-infringement letter, these are all critical considerations.