Whether you have discovered someone that might be using a brand name which conflicts with yours, or whether you have received a letter alleging infringement of another brand, a Cease and Desist letter is a common tool when dealing with trademark issues. Over the years, our firm has represented all types of businesses in sending and responding to hundreds of such letters.
The majority of trademark disputes are resolved without litigation, and the great majority of trademark litigation cases that are filed are resolved without a verdict from a court. In short, both sides in these matters generally have an incentive to find a cheaper and quicker solution that avoids the costs, delays, and risks of litigation.
Sending a Cease and Desist Letter
If you find a possible conflict with your brand, the first thing to do is document it, then talk to an informed attorney. Some actions could backfire or harm your claim, so careful and deliberate investigation and action is recommended. Sending a Cease and Desist letter is often the first step to provide a warning and seek a resolution, provides notification of the infringement concerns, and demands that the other party stop the infringement of the mark.
There are numerous important considerations to make before sending a Cease and Desist demand letter, such as:
- Is this a real infringement concern?
- What will happen if the letter is made public on social media or in some other manner?
- Is a letter the most appropriate action, as opposed to a phone call, filing suit, or some other action?
- Should the letter be strong or should it be gentle?
- Are you prepared, if upon receipt of the letter, the other party files suit in court for a declaratory judgment of non-infringement?
- Are you sure that the party to whom you are writing was not using the trademark first and cannot respond by asserting a claim against you?
Receiving a Cease and Desist Letter
Brand owners who receive a Cease and Desist letter should not take it lightly.
Failure to respond may make the matter more complex, more risky, and more expensive in dealing with such a scenario. Key considerations to address include:
- How similar are the names, product, services, or logos?
- Are the businesses related?
- Who used the name first?
- Is there a compromise that might be reached?