As a business owner, you have worked hard to establish a brand to sell. You also may have filed for trademark protection so that nobody else can use your trademark for the type of product or service you sell. Then, one day, you get some jarring news—someone is selling similar products or services under your brand name. Not only does this rob you of sales that are rightfully yours, but also it could potentially tarnish your brand by tying your reputation to an inferior product.
Ignoring a small violation might be tempting, but to do nothing would not only allow the infringer to keep profiting off you with ill-gotten gains, but also may, under trademark law, invalidate your trademark entirely due to the law's requirements to actively use, monitor, and defend the trademark.
As a business owner, what should you do? Your first step, before calling in the litigators, is the useful tool of a cease and desist letter.
What is a cease and desist lettter?
A cease and desist letter is a letter demanding that the recipient stop engaging in a particular activity. In this context, the cease and desist letter would demand that the recipient cease infringing on your business's trademark. As the trademark owner, you should send a cease and desist letter as soon as you learn of infringement if you are confident that your rights take priority over those of the infringer.
What is in a cease and desist letter?
Cease and desist letters can take many forms (here is one example), but there are six essential components.
1. Proper address of infringing party
Use a physical address and snail mail that will provide proof of receipt, such as registered or certified mail. If you later have proof that the recipient ignored a cease and desist letter, it could strengthen your case that the infringement was willful, which could entitle you to monetary damages in litigation.
2. Proof of your trademark rights
Ideally, this proof would be in the form of a trademark registration, although trademark rights often can be established through evidence of prior use. If you do not have a trademark registration, you should provide your date of first use, a list of products and services sold under the trademark, and the geographic areas in which the products and services are sold.
3. Details of the infringement
You will want to provide samples of how the infringing party violated your trademark rights. As an example, a screenshot showing that the infringing party offered goods for sale under your trademark over the internet would satisfy this requirement.
4. Reasonable time frame for infringing party to respond
It may be that the recipient of your cease and desist broadside is an unknowing infringer. Allow the other side some time to gather facts on their end. It may be that the other side is not aware of your mark (particularly if it has not been registered), or disagrees in good faith that your rights to the mark conflict with their usage.
5. Demand for written assurance of compliance
Your cease and desist letter should demand specific action and a time frame during which all infringement of your mark by the recipient party should cease. Cease and desist letters work well in conjunction with certifications of cease and desist, in which you provide the infringer a form to sign, detailing both the infringement and the steps taken to cure the infringement.
6. Consequences of failing to stop infringement
In any kind of trademark standoff, you will want to provide consequences to the other party for failing to respond. The consequences section of your cease and desist letter involves careful balancing: You want to dissuade future infringement by including real consequences for future infringement, but threatening action without later taking any can undermine your credibility.
If you are not willing to sue, make the consequences vague by stating that you will consider all available options, including assertion of all rights to the full extent of law and equity. Translated, this includes a civil suit for monetary damages and a possible injunction to prevent the infringing party from any further use of your trademark.
Trademark infringement, unfortunately, is very common, and you will need to be vigilant to protect your rights. The trademark cease and desist letter is an important tool for protecting your brand and, ultimately, your business.
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