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You NEED to hire a trademark attorney. Without knowing the marks, the companies involved or seeing the letter, it's tough to answer your question. However, the better part of valor says that until you clear up the cease-and-desist letter ("C&D"), you should stop selling the potentially infringing shirts.

The trademark owner has not only the right but the duty to police its mark. Part of policing a mark is sending out C&D letters to potential infringers, and suing those who do not comply with the C&D.

If you, having received the cease-and-desist letter ("C&D"), continue to sell the potentially infringing shirts, you are setting yourself up for a very, very expensive trademark infringement lawsuit. To win that suit, the parent company would have to prove that your t-shirts are confusingly similar to a mark that they are using in commerce in the same class of goods or services — that is, the average consumer would be confused by your shirts into believing that the mark's owner is the source of your shirts. I don't know the products involved so I have no "feel" for how much trouble they would have proving their case. However, if they DO win their case, they have the right to prevent you from making any further sales, to require you to disgorge profits from your sales, to require you to engage in corrective advertising, to require you to destroy any merchandise that you may still have in stock that infringe their mark, and, if they prove that you willfully infringed their mark (which they would have little trouble doing if you continue to sell after receiving a C&D from them), they can request and receive trebled damages and an award of reasonable attorneys' fees and costs. You do NOT want to go there. Even if you believe that your shirts do not infringe, you need to get this matter settled out before you sell any more potentially infringing shirts.

The gold standard for "confusingly similar" is found in a case from the US Court of Appeals for the Second Circuit that was decided in the 1960s called Polaroid Corp. v. Polarad Electronics. That case laid out several factors that the courts can use to measure confusion, and those so-called Polaroid Factors have been emulated by every federal court in the country.

What is going on with other people is not relevant to you. YOU have received a C&D, and if you continue to sell the infringing shirts the trademark owner WILL come after you.

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Expert:	Nancy Delain
Pos. Feedback:	100.0 %
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Answered:	3/18/2009

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