I,
On behalf of the Company, I further certify that:
Date: _________________________ | By: ______________________________________________ Name: Title: |
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Your trademark is your marketplace signature, an indicator that your company produced the items for sale, and a promise that those items will meet the quality standards you’ve worked to establish.
Suppose another company or individual attaches a similar mark to their goods or services. In that case, it’s akin to a forgery, using your "signature" to obtain customers or signal your approval of those products. This forgery can cause an immediate decrease in your sales by siphoning purchasers to a different company’s merchandise. It can also cause a long-run decrease as well, as the power of your brand can get diluted by association with lesser quality goods.
By law, you must challenge any infringement on your trademark and intellectual property to hold onto the protections you’ve earned. To keep your trademark, you have to defend it. Sending a formal cease and desist letter is a good first step. It shows that you’re monitoring your trademarks and protecting your brand. But how can you be sure that the company agrees with you and that the trademark infringement will stop? Although some organizations may offer verbal promises, a formal written confirmation from the company can provide assurance of its intent. That’s where a certification of cease and desist document comes in. It is designed to assure you that the competitor company has stopped using your trademark, and this is their written acknowledgment of it.
Even if your trademark is registered with your state or with the United States Patent & Trademark Office (“USPTO”), you don’t have the rights to that mark until you have actually used it in your business.
Examine the mark you think is infringing on your trademark. It must be both confusingly similar to yours and used in a related product area. For example, you may own “John’s Body Works” for your car company, but you would have a hard time proving that a beauty salon with the same name would confuse your customers.
Before you start this process, make sure you are the actual trademark owner and ask whether:
If your trademark is not registered, send a sample of your mark with the certification. If your trademark is registered, attach a copy of your USPTO registration.
Contact the infringing company before providing the certification. Try to agree in advance on whom in their organization will complete and sign it. Ensure that a high-level officer (i.e., someone with authority to bind the company) is signing on their behalf.
All correspondence with infringing companies and individuals should be kept in an organized and accessible file. If the trademark infringement continues, this will show your vigilant defense of your trademark and provide evidence that the other company intentionally infringed after receiving notice.
Be prepared to take additional steps if the company or recipient ignores your notice, doesn’t respond, and/or continues to use the infringing materials. Failure to act within a certain time period against the infringing party is known as “acquiescence,” and it could lead to the limitation or termination of your trademark rights.
Once you receive the signed certification, monitor the company, its website, and its advertisements to see if it is, in fact, complying with that document. Make and keep copies of any infringing documents that you find.
If trademark or copyright infringement continues or recurs, consider sending a second cease and desist letter with language referencing the signed certificate and the additional infringing actions.
At this point, it might be a good idea to meet with an experienced attorney dealing with trademark and intellectual property infringement to prevent further injury to your trademark and to obtain compensation for the damage that may have already been done.
The following instructions will help you understand the terms of your certification of cease and desist.
In the certification, you need to provide the name of the person at the infringing company who has agreed to sign. Also add their title or designation in the company. For example, president, chief executive officer, or general counsel.
Add the information of the infringing company, including its registered legal name with the state. For example, LegalZoom's legal name is “LegalZoom.com, Inc.” If the company has a public name (or trade name), add that as well.
Here, you have to give a detailed list of how the infringing company has been using your intellectual property and trademarks. For example, the company might be using your mark on their website to promote or drive traffic to their site with your trademark. Such online infringement should also be detailed here.
In the certification, provide all the information related to the company that owns the trademark. Include details like how long you have been using the mark, whether it is registered with the USPTO, and the date you received the official mark.
You've created a brand name and built a reputation for quality and service. Unfortunately, business rivals may want to cash in on your hard work using a brand name or symbol that looks like yours. This needs to be clarified for your customers. Protect your trademark from infringement with a certification of cease and desist. A certification is a written confirmation from the infringing party that they have stopped using your trademark in their business.
To complete your certification of cease and desist, the information you'll need to have are: