If someone is using your brand name, copying your product, or creating confusion in the marketplace, your first instinct might be to send a cease and desist letter. Usually, that is exactly the right move. Never underestimate the power of a well-written cease and desist letter.
Sometimes, though, it can backfire. The truth is, whether you should send a cease and desist letter comes down to a strategic decision. Like most strategic decisions, it has both upsides and risks. In this article, a trademark attorney will break down what a cease and desist letter is, when it works, and when it can create problems you’ll want to anticipate.
WHAT IS A CEASE AND DESIST LETTER?
In intellectual property law, a cease and desist letter, or also often called a “demand letter”, is a formal notice asking someone to stop using your trademark, copyright, content, or other intellectual property. In the trademark context, it typically alleges likelihood of confusion and demands that the other party stop using a similar name, branding, or design.
These letters will give them information about your rights, summarize the law, explain how the recipient is violating that law. It will also outline the things you would need them to do to prevent you from escalating the matter further, which usually is a “demand” that they “cease and desist” use of your intellectual property (hence the name!).
A demand letter is usually the first step before litigation. For instance, if you notice someone using a logo similar to yours, before racing to the courthouse, you’d send a cease and desist letter. Even if you aren’t actually planning to ever sue, demand letters are a great and useful tool.
For an interesting read involving a cease and desist letter, read our fact-checking article about the social media influencer who claimed Pepsi changed the name of Sierra Mist because of her.
REASONS You Should Send a Cease and Desist Letter
1. You Are Expected to Police Your Trademark
There is a legal requirement to enforce your trademarks. If you allow confusingly similar uses to continue unchecked, you risk weakening your rights over time. In extreme cases, failure to enforce can impact the strength or scope of your protection. A cease and desist letter is an affordable and efficient way to show that you are actively policing your mark. Brands such Aspirin, Thermos and Zipper are examples of brands who did not successfully enforce their rights and ultimately lost their trademark protection.
TIP from one of our Trademark Attorneys: This record of enforcement can be important in future court cases or negotiations.
2. Sending a Cease and Desist Letter Allows a Dispute to Resolve Quickly and Quietly
Because a cease and desist letter is the step before litigation, people usually pay attention to them. In many cases, the recipient simply was not aware of the conflict, or did not understand trademark law. Other times, a recipient sees the letter and realizes that you are taking your rights seriously and decide that they do not want the cost or stress of a dispute. They just needed a push in the right direction. Litigation is costly, time consuming and emotionally draining for business owners. The majority of recipients would rather work toward a fast resolution without going to court.
Especially if sent by an attorney, the demand letter signals that your claim has been evaluated, that you are serious about your rights, and litigation is a real possibility. Simply stated, people take these letters seriously.
TIP from one of our Trademark Attorneys: Even in situations where you sent your own letter and it was ignored, a second formal letter from a law office often gets a response. Don’t give up too early!
3. They Put You In a Better Legal Position
If your case really does go to court, a cease and desist letter can bolster your case. First, a record of a demand letter will help you look like you have a good faith case, because you tried to resolve it out of court. Both judges and juries appreciate this.
In situations where you sent a cease and desist letter and the infringer ignores you, it can trigger “willfulness” or knowledge. Cases where a judge or jury finds willfulness or knowledge carry much harsher penalties against infringers, and a higher chance that you fully recoup your losses.
THE RISKS OF SENDING A CEASE AND DESIST LETTER
1. Your Letter May End Up Online
Recipients of demand letters routinely post them on social media and professional platforms. And when they get posted, context disappears. This is not a brand new phenomenon as this issue began around 2010 when social media started to proliferate wildly. However, it continues to be a problem and a lesson for some companies. Even strong legal positions can read negatively to a general audience. For instance, the public can easily reframe a legally sound letter to be a large company bullying a small business.
Regardless of your corporate status, if your demand letter is poorly worded or unfounded, you risk coming off as sounding aggressive and overreaching. Overly aggressive tone, broad demands, or weak claims can make you look unreasonable, even if you believe you are technically correct.
TIP from one of our Trademark Attorneys: Final review of any of your demand letters should entail thinking about how it would look posted online (or to a judge or jury). That is the reality of today’s world.
2. You Open the Door to Role Reversal
Sending a demand letter carries the risk of the recipient turning it around on you. They can file a Petition to Cancel your trademark at the United States Patent and Trademark Office (USPTO), arguing that your trademark came after theirs, or that yours is too weak to qualify as a trademark. Every once in awhile someone might think they are the infringed, and it turns out they are actually the infringer.
In certain situations, the recipient of your letter can file a declaratory judgment action asking a court to rule that they are not infringing. Your letter could theoretically reveal your legal arguments, signaling your priorities, and giving the other party time to prepare.
TIP from one of our Trademark Attorneys: Declaratory judgments don’t cut you off from being able to argue a case, but it makes it so your infringer can file the case where they prefer. Say you are in New York City and you send your demand letter to your infringer in San Francisco, they could file the action in San Francisco instead of you filing near you. This becomes a nuisance to defend.
Tips For Success
- Make it clear, succinct and simple. You want to outline the law, and focus on what the infringer is doing wrong. Don’t spend pages and paragraphs on complicated legal concepts. This will not be convincing to the reader. Save that for court filings.
- Be thorough, and don’t underestimate your recipient. They might handle it in house, they might hire a seasoned litigator to handle. In fact, even the smallest company might have a skilled family member or friend Esq. that can help.
- Know that a judge or jury might see it, if your case goes to court. Make it accurate. Do not threaten criminal ramifications, do not make it seem like extortion and do not make false statements.
So, Should You Send a Cease and Desist Letter?
9 times out of 10 the answer will be yes. However, with everything in law, it pays to consider next steps and outcomes. A cease and desist letter is most effective when your legal position is strong, your goals are clearly defined, the tone is calibrated to the situation, and you are prepared for the possibility that it becomes public. The difference is not just whether you send one, it’s how and when you send it. It is a good idea to thoroughly assess multiple parts of the equations prior to sending.
TIP from one of our Trademark Attorneys: A lot of the risks mentioned above can also be artfully written around in the letter itself.
And remember, never under estimate the power of a good cease and desist letter!
Have questions about whether you should send your cease and desist letter? In addition to being litigation and trial attorneys, we help businesses and creatives enforce their trademarks with strategic, non-litigious solutions, ranging from cease-and-desist letters and takedowns. Protecting your brand shouldn’t be scary, it should be smart.
Stemer Law (Stemer, P.A.) is a Denver trademark law firm serving clients across the U.S. and abroad. With 1,000+ trademarks filed, we make brand protection simple, affordable, and effective. To speak with a trademark attorney contact us at hello@stemerlaw.com or (303) 928-1094.
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