So You Got Cease & Desist…
Perhaps you’ve already experienced receiving a cease and desist letter for a claim of intellectual property infringement of someone’s copyright, trademark, or a combination of the two. On the other hand, maybe you haven’t received a cease and desist letter yet, but you want to know the tools of how to evaluate the claim and what to do next.
Well, this blog will focus on these aspects. The first and most important step (or rule) is to remain calm in all ways.
A Step-by-Step Guide in Handling a Cease and Desist Letter
In a cease and desist letter, you’ll see an explanation and supporting details of the infringement claim.
Note: The party that sent the letter has a responsibility to advocate for the ownership of their intellectual property rights. They’re not doing it to attack you or be anti-competitive. They just likely believe that there’s an infringement on their intellectual property rights.
Check the steps below and learn how to handle a cease and desist letter calmly and properly.
Step 1. Read the letter carefully.
While reading the cease and desist letter, look up any serial numbers the other business has referenced regarding registered trademarks or copyrights, research their business, and circle the dates—they’re important.
You might ask, “why are dates important?” The business should be claiming priority of their rights because they did it first. Merely having a registered trademark or copyright may not be enough to have priority of claims over your use of similarly situated intellectual property. The other business should’ve used the intellectual property first.
So, if you were the first to use the claimed intellectual property ahead of the date they’ve provided or listed inside their registered marks, you might have a valid defense of first use.
Step 2. Evaluate if it’s a valid claim for copyright or trademark infringement.
After reading the letter and researching important details, the next thing to do is to evaluate if it’s a valid claim for copyright or trademark infringement. Determine whether your use and the other business’ use would be “confusingly similar” to a consumer.
By doing this, you need to look at the claim, not from the eyes of a business owner but the eyes of a reasonable, uninvolved individual. It might help to approach the claim as reasonably and objectively as possible.
Step 3. Look at the demands and dates in the letter.
Note the specific demands (what activities you need to cease), dates they’re requesting that you cease the use of the infringing intellectual property, and the date they’ve requested a response (usually written confirmation that your infringing use has officially stopped).
Now, when deciding whether you should respond or agree that they have a valid claim, remember that upon receiving the letter, you’ve officially been put on notice of the alleged infringement, so any continued use will be knowing infringement. For any continued use after receipt of the letter, the other business has a stronger claim to damages because you can no longer claim that you were unaware of the infringement.
Of course, if we’re talking about a registered trademark or copyright, their registration alone serves as constructive notice. They didn’t have to notify you that you were infringing to technically accrue statutory damages. However, this cease and desist letter has now become an unquestionable notice of the infringement. So, when you read it, your gut is telling you that you unknowingly were infringing on someone else’s intellectual property, then it’s time to take action.
Step 4. Communicate openly and honestly.
Dealing with the alleged infringement doesn’t mean you have to stop advocating for yourself. Changing your brand overnight can be a huge pivot, and there might be many moving pieces to the puzzle to ceasing the use of this intellectual property.
So, communicate openly and honestly. When I say openly and honestly, it doesn’t mean you have to disclose the amount of inventory that you have (yet). Don’t disclose any information that should continue to be confidential. Instead, if you truly believe that the other business’ claims are valid, you should reach out and acknowledge receipt of their cease and desist letter and state that you were unknowingly using the same or similar mark. Openly express that you have every intention of complying with their request. However, let them know if you need an extra time to comply.
You might need more time to think about how you’re going to rebrand and the downstream impacts and consequences of having to cease the use of this intellectual property. Remember, the date you offer should be realistic (not too far in the future but a date that shows good faith interest in making changes). Let them know that you have every intention of working towards the cease of your activity and would comply within that period. Now that they have a certain date or time, you’ve taken back a little bit of control and have the opportunity to think strategically.
Does step 4 really work?
Now, you might have doubts if the last step would work should you receive a cease and desist letter in the future. Based on my experience, I’ve found success with many clients by using this approach. I’ve heard many tears on the other side of the phone, saying they didn’t realize they were using someone else’s registered intellectual property.
My clients knew there was no surviving this claim because they were using it similarly with the same products or services. There was no beating a claim that it would be confusingly similar to a consumer. But let me tell you, my team had successfully negotiated the time at which they stopped using the infringing intellectual property.
At the end of the day, the intellectual property owner wants to assert their rights and protect those rights in the long term. They’re probably more willing to be flexible with someone acknowledging their unknowing use and taking strategic steps to stop using this intellectual property.
Do you want to know what the next thing our clients do? They trademark their new brand, so they never experience this situation again.
What to do if I believe the intellectual property owner doesn’t have a valid claim?
If mark is used for non-related goods or services, or your mark isn’t as similar as the other business thinks, or better yet, you believe that you can modify your use of the mark to make it more distinctive and not to infringe on the other business’ mark, then this is your opportunity to communicate with the intellectual property owner to refute their claims or suggest what you can do to create distinctiveness of your use so your use won’t clearly confuse consumers.
I want you to know that there are options. There’s no one way to respond:
Find legal counsel.
If you can’t advocate for yourself and your vision, I encourage you to find the legal counsel that can support you. Rebranding, giving into frivolous demands, not taking the opportunity to fully evaluate the alleged infringement, and not finding ways to carve out your continued use would be doing your brand an injustice.
Advocate for yourself!
As I’ve mentioned earlier, you should remain calm in all ways. Read the cease and desist letter. Do your research. Trust your gut instinct. Most importantly, continue to advocate for yourself.
Remember that anything you put in writing can and may be used against you. Your best defense is honesty in claiming that you unknowingly were infringing on their mark if the alleged infringement is true.
What if I need to send a cease and desist letter?
To own your brand, you have a responsibility to advocate for yourself. If you ever need to prepare a Cease and Desist Letter, keep in mind:
If you’ve never received a cease and desist letter, it’s now time to do your due diligence and ensure that you’re not infringing on anyone else’s intellectual property rights. It’s always easier to be proactive and have the time to pivot (if necessary) when you’re the only one that knows than when you have the eyes of someone else on you─encouraging you to move faster than what’s practical for you. Like every legal foundation of a business, the key is to be proactive, advocate for yourself, and advocate for the long-term vision of your business.
Evaluating and responding to a cease and desist letter is no different. I hope this case never happens to you. But if it does, I hope this blog has given you the tools to approach a cease and desist letter calmly and properly. In case you’re the one sending out a cease and desist letter, the above information is still important because it will motivate you to own your brand and advocate for yourself.