I got a cease and desist on a registered trademark belonging to someone else, that I had been using on one of my products for years. But, at the end of the day, there really was no question that this company's use of the mark predated mine, which is the primary legal test. Also, there was a serious likelihood of confusion - peeps were always calling me up and wondering if my product was the same as theirs, which is the second most important test.
But, instead of just lying down, I opposed them vigorously. I responded with various legal arguments, all of them credible, about how there really was no likelihood of confusion, and that at worst the mark they had registered was weak and really more of a descriptive mark at best. Anyway, without getting into details, just came back at them repeatedly with letters about how they were wrong and I was right, and that at the end of the day I would prevail and squash their mark.
Also, I pointed out how they would have to sue us locally and come all the way across many states to where we were for the action. And I delayed my responses 2 - 3 months each, thereby dragging the whole thing out. Finally they just gave up - I mean their final letter was "we beg to differ" but they did absolutely nothing and it has now been almost three years since they first wrote to me saying that I would "save myself a world of trouble" if I would just lie down and stop using the mark.
Funny thing is - they actually stopped manufacturing their product recently and now I am the only game in town. I am moving to CANCEL their mark, lol, on the basis on non-use. Maybe they realized all along that their market share was dying, so they didn't have the stomach for an all out fight.
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