Defend Your Trademark with a Certification of Cease and Desist

Defend Your Trademark with a Certification of Cease and Desist

by Tim Peterson, Esq., June 2019

As a small business owner, news of a competitor selling its products under your trademark can be maddening—and may even put your company in jeopardy. Unfortunately, such news is depressingly common. For this kind of situation, you may consider using a certification of cease and desist.

Fountain pen on orange folder containing paper with title "cease and desist" printed on it

Overview of a Certification of Cease and Desist

A certification of cease and desist is typically used in conjunction with a cease and desist letter, which is used to demand that the recipient stop engaging in a particular activity, such as infringing on your business's trademark. Sending a cease and desist letter is almost always the first step in enforcing your trademark against an infringer.

A certification of cease and desist is a form to be filled out by the infringer, detailing both the infringement and steps taken to cure the infringement. The document makes for a clean way of advancing your legal position by crafting a promise in which the infringing party admits to the infringement and agrees on specific steps to take within a certain timeframe. Should the infringing party sign and return the certification and fail to abide by its language, you will have clear evidence of willful infringement, in addition to possible claims for breach of contract.

A certification of cease and desist does not always have to be included with a cease and desist letter. In complex or murky situations where the trademark violation is not clear, the party to which you send the certification will most likely ignore the request to sign. However, sending one in clear cases of infringement can rarely hurt.

What to Include in a Certification of Cease and Desist

To make your case as strong as possible, make sure your certification includes the following:

  • The full and exact legal name of the infringing party. This information can often be found with the Secretary of State of the infringing party's state of incorporation. The certificate should be signed by an officer of the infringing party who has oversight of the infringement, such as the director of the department that committed the infringement. Sending it to the wrong employee of the infringing party can delay the response. What's more, an employee who signs without proper authority may not bind the company to the certification.
  • Admission of infringement. Include specific details about all infringements of the trademark in violation of your rights. Lay out your rights to the mark for the infringing party to acknowledge and list all infringed-upon trademark registration numbers as well as all known instances of infringement for the infringing party to acknowledge.
  • Promise to cease future infringement. The infringing party should be made to promise that all infringing use of the trademark immediately cease. This promise should including stopping usage to identify the infringing party's products as well as use in all marketing. The infringing party should also promise to destroy all copies of the trademark infringement in all formats, whether physical or digital, in their possession. No usage means no usage, and you would be within your rights to insist that the infringement be rooted out of the infringing party immediately.

The exact wording of the certification can be hammered out during subsequent negotiations. Regardless of whether you use a templated form or craft your own, a certification of cease and desist can serve as a useful tool in the eternal vigilance required in properly policing your intellectual property rights.