The following is a transcript from an episode of the Tricks of the Trade(mark) podcast. Listen to the episode here.

A significant part of my practice as a trademark attorney is dealing with cease and desist letters and infringement or potential infringement situations. Of course, about half the time, I’m sending such letters as a potential plaintiff, and the other half of the time I’m responding to such situations.

I want to discuss five key things to think about before sending a cease and desist letter.

The first important, and the most important thing to think about is knowing the facts. Now, it may be impossible to know all the facts up front, but you want to make sure that you know as much as you can both about the mark that you’re sending on behalf of and then the other party’s mark and company and history. The facts are key as to the nature of the products or the service, and in particular, the dates, the dates of use. You don’t want it to backfire by telling somebody to stop using a mark, who was actually using the mark before you or your client was.

The second consideration is the tone. Should the letter be aggressive or friendly, or somewhere in between? There’s a time in place for all of those and it depends on the circumstances, it depends who the letter is going to. There are a lot of considerations there.

The third consideration is what are you demanding in the letter. Are you demanding that the other side stop using the name altogether? Are you demanding that they change something in the way they’re using a trademark? Are you demanding that they withdraw an application to register a trademark? So you want to make sure that you focus on what the demands are, and why you’re demanding those particular things. There should be a reason for the demands.

The fourth consideration is who are you going to send the letter to? Sometimes that can be challenging to track down who is actually in charge or responsible for using a mark or for some activity. If it relates to an application or registration you certainly want to check the USPTO records and find out what the correspondence address listed in the USPTO is, and if the other side is represented by counsel, you certainly want to communicate with counsel. Not only is that the proper and ethical thing to do, it also is a lot more likely, in my experience, to resolve the matter more quickly.

The fifth consideration, now that you know who you want to send it to, is how do you want to send it? Are you going to send it overnight delivery? Are you going to send it first class mail, are you going to send it via email? Generally, I would lean towards sending it overnight delivery. I think it makes the biggest impact upon receipt that this is a serious matter. It kind of goes against the grain of the trend of everything being done electronically now. But unless I’m sending it to an attorney that I know and I’ve dealt with before, who I know will take it seriously, then I’m likely to send it overnight.

A final bonus consideration is how much time are you going to give the recipient to respond. I generally allow for somewhere between two and four weeks for a response. You want it to be timely, for them to take it seriously and move quickly, but I find it offensive when I receive a letter and someone demands that I respond within five days or a week. It’s just simply not a reasonable amount of time to communicate with a client, come up with a strategy, draft something, get it approved and respond, and it really sends a message of a spirit of lack of consideration, of lack of cooperation right from the start and therefore it’s going to impact potentially how I respond.

Those are my tips for sending a cease and desist letter. Remember, the most important one is to investigate thoroughly before you do anything.

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