Cease and Desist Letters

Received a Cease and Desist Letter?

Whether for patents, trademarks, copyrights or other types of intellectual property, talk is cheap. Letters are inexpensive to send. On the contrary, litigation easily costs well into the five figures, so cease and desist letters are both a good tool and overused tool. (Interesting side point: in China, the laws are different and cease and desist letters are taken very seriously.)

Much infringement is actually accidental. You may even find yourself receiving a cease and desist letter from another attorney with regards to your business, products, or branding. If so, we will gladly review the adversary’s intellectual property and advise you how to best move forwards. Defendants often pay $0 to settle a case.

If the allegations of infringement do appear to be valid, we can work with you to change your business strategy or branding to be allowable and then file appropriate intellectual property protections so that you can be assured of the legality of your actions and can stop others from copying you.

Don't Be Bullied

Handling many such letters, it is often immediately identifiable if a letter should be taken seriously.

The number one reason to hire a lawyer is to show seriousness from your side – and not say the wrong thing which might be used against you. A good lawyer is able to more level headedly handle the matter, being removed from the emotions involved in being accused of wrongdoing. A great lawyer also understands how you feel and takes your emotions into account – as well as that of the adversary.

While we can’t give specifics in a public article, this law firm has quite a collection of cease and desist letters with all kinds of demands. Sometimes, they’re just fishing expeditions. If it’s a “real” claim, most of the time, the other side actually just wants you to stop infringing.

Is The Adversary Going To Go To Court?

Just as you fear spending lots of money on litigation, so do most plaintiffs. Legal fees are rarely recoverable and only the lawyers are usually the winners.

Thus, cease and desist letters frequently lead to some sort of resolution.

Know your adversary.

Telling a Good Letter From a Bad Letter

Not everyone with a law degree knows what they’re doing. True story: I once received a letter from a licensed attorney full of copyright and trademark symbols like it was made by a 4th grader. When non-intellectual property lawyers send letters about patent and trademark infringement, they often have no idea what they are talking about.

Here are a few tips – does the letter come from a reputable law firm? Does the letterhead have full contact information and list what state the lawyer is registered in? Is their alleged client a legitimate company? How big are they? Does they letter reference a patent registration number or trademark registration number? Does the letter beat around the bush, have a laundry list of accusations with no analysis, or get to the point? Does the letter reference case law or statutes? Are the claims too crazy to be true? Are the demands reasonable or do they look like something that was copied and pasted?

For example, a cease and desist letter from Microsoft, citing an actual trademark registration number and photographs of a product they ordered from you … I’d take that seriously.

These are a few issues which should help lead you in the right direction.

How Do You Know If You Are Infringing?

This is a summary and not legal advice –

For trademarks, the issue is “likelihood of confusion” but this depends on how many others use similar names in commerce already and how close your goods and usage is to the trademark holder. That is, if they have an actual trademark. A registered trademark is not required to obtain damages for trademark infringement, but the damages obtainable are exceedingly higher, and making such a claim is much easier.

For patents, to infringe you must be carrying out each and every limitation of at least one claim in a patent. Even if you are able to figure out how to read the claims, their interpretation often depends on what happened while the patent owner was trying to obtain the patent. Thus, for example, if they narrowed their independent claims from “a candle” to “a pink candle”, if your product is not pink, it is not infringing due to the purposeful narrowing. However, as “candle” wasn’t narrowed, it may be that a “wax ball” is seen as an equivalent thereof – and is still infringing. An actual registered patent is required to obtain patent damages.

For copyrights, the issue is whether your work is a derivative work. Did you copy it, did one of your employees, or is your work having artistic quality based off of the same prior work? Perhaps this is just coincidence.

Finally, there’s trade dress, which is really a form of unregistered trademark in most cases. This is where you copy the look of someone’s product, usually their packaging so closely as to cause confusion in the marketplace.

Sending a Cease and Desist Letter

Intellectual property prevents others from copying you – prevention is often all your need. Sometimes, despite the existence of a registered patent, copyright, or trademark, a competitor may infringe upon your rights nevertheless. We have been in the business for long enough that we are quite experienced in handling these situations.

First, we will analyze your intellectual property rights. For patents, this can be a detailed review of the issued claims. For a trademark, we will verify that you have used your mark for all the goods and services that were listed in the registration. We want to be sure of the extent of your rights before confronting the other party.
Then we send what is known as a Cease and Desist Letter. These letters typically have a few key components:
Introducing ourselves as your hired attorneys – This shows that you are serious and are not ready to mess around.
Explanation of your rights – This can include details from patent claims, trademark goods and services, usage history, and other relevant rulings made by the Patent and Trademark Office regarding similar cases.
Description of Alleged Infringement – Here we describe what exactly your competitor has done to infringe upon your rights. For example, this may look something like: “Your Amazon listing number ####### for a vacuum cleaner infringes upon my client’s patent for suction-based cleaning apparatuses. Specifically, claims 1 and 7 of my client’s patent state….. which exactly describes the hand-hold of your product.”
A demand to stop infringing and potentially monetary compensation.
A date by which, if we do not hear back, further action will be taken.

Outcomes

Usually individuals and companies do not want to spend tens of thousands of dollars and hundreds of hours in court. Thus, Cease and Desist Letters frequently lead to some sort of resolution. Ideally, the competitor will halt sales and marketing altogether. Another positive outcome can be a licensing agreement, where you can earn royalties on every sale.

Sometimes, however, it is not that simple. The competitor may put up a fight and argue that they are not infringing. In this case, we may need to correspond back and forth a few times before finding a solution amenable to both parties.

The worst case scenario is that the competitor refuses to change their actions whatsoever. At this point, the primary way to defend your intellectual property is through litigation. We work closely with many litigators and will refer you to experts whose specialty is in dealing with intellectual property defense in the courtroom.

If You Are Accused of Infringement

Much infringement is actually accidental. You may even find yourself receiving a Cease and Desist Letter from another attorney with regards to your business, products, or branding. If so, we will gladly review the registrations and intellectual property of the claimant and advise you how to best move forwards. Most of our clients pay no money for infringement when settling such cases.

Monitoring and Protecting Your IP

It is important to note that if you do not defend your intellectual property, your exclusive rights will lose strength greatly. For example, let’s consider a case where you have a trademark for the name “GAMMA” for aviation services (Take that Delta Airlines!). A rival then forms an airline called “Flying Gamma”. A school for pilots is founded with the name “Gamma Pilotry”. Two years later, a customer alerts you that they accidentally booked a private jet with a company called “Gamma Privacy Aeronautics” because they thought that this was a branch of your company. You bring Gamma Privacy Aeronautics to court after they refuse to change their name. The court will essentially say “too bad” to you. You did not stop Flying Gamma or Gamma Pilotry from operating and therefore, the industry has gotten to a point where the word “Gamma” is not considered unique or proprietary anymore, even despite your trademark registration!

We sadly see situations like this all too often, which is why we strongly emphasize the importance of periodically searching for any potential infringing rivals before it is too late. To aid with this, we offer our services in monitoring the federal intellectual property databases for potential issues and aggressively seek resolution.