Trademark Cease and Desist Letter Forms: The Do’s and Don’ts

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Too many companies and too many trademark lawyers simply send out trademark infringement cease and desist letters as a matter of course. They don’t, as good attorneys or good companies, or good stewards of the trademark system, stop and think about who they’re sending the letter to. Sometimes people aren’t intentionally infringing your trademark at all, and sometimes there are legitimate reasons why people have registered a similar domain name, or used a similar company name, or have otherwise done something, which you believe is too close to your trademark.

My name is Trademark Infringement Attorney Enrico Schaefer, and today we’re going to talk about the do’s and don’ts of sending a trademark cease and desist letter. The deal here is this. There are people who will directly attack your trademark and those people deserve a very aggressive threat letter. They deserve to receive a threat letter which tells them that you believe that they’ve intentionally targeted your trademark and that they’re liable potentially for statutory damages and attorney’s fees under trademark law.

A good attorney will put in that very aggressive trademark infringement threat letter, the fact that there’s a demand to cease and desist certain types of activities, to turn over the domain, to take down the website, these types of things. But as a trademark attorney who sees these kinds of letters every day, I have to tell you simply creating a trademark infringement form letter and sending it out to everyone you believe may be infringing your trademark, is not the way to go. You need to categorize the people that you’re sending the letters to into at least two, if not three boxes.

The first box are people who are actually running legitimate businesses who just happen to be using a similar trademark and there’s no indicia that they targeted your trademark, or even knew about your trademark, prior to launching their product or service. These people may have invested tens or hundreds of thousands of dollars in their use of a similar mark, and it’s going to be very difficult for them to rebrand.

You won’t be able to prove, and your lawyer won’t be able to prove, that they intentionally targeted your mark and thus have engaged in intentional infringement. So, what you’re looking to accomplish with those folks is some sort of cooperative approach where you may even have to pay them the money to help them rebrand.

Believe me, paying money to someone who hasn’t targeted your trademark, in order to further your trademark rights or broaden your trademark rights around your mark, is a good investment in many instances, and oftentimes costs a lot less than filing a trademark infringement lawsuit and paying the attorney’s fees required in order to move that litigation case through the court system.

The second box, are those folks who, man, it really appears that they may have known that you existed, but they didn’t understand trademark law when they engaged in the infringing activity. So, they may have registered a domain name that was similar but in a different type of goods and services. They may have used a variation of your trademark as part of their branding or marketing materials. It just seems like there is something there that may be problematic, but you’re not quite sure.

For those folks, you may have to send a notice letter which contains a little bit more of a threat. So, the notice letter is going to say, “Hey, we’ve got trademark rights. You may not have been aware of it. We have superior rights.” You establish your first use in commerce, you establish the likelihood of confusion, and you try to get them to contact you through their attorney so you can start to have a business-to-business discussion through the lawyers.

In the second category, you have to be a little bit more aggressive than that. So it’s going to be a blend between a notice letter and it’s going to potentially contain some threats that say, “If you do not take these actions, if you do not cease and desist infringing activity, you could be liable for damages, statutory damages, and attorney’s fees in litigation.

The third box are folks who by all appearances are intentionally infringing your trademark and they have no qualms about it. Those folks do need to receive a trademark threat letter, which is very aggressive and is designed to scare them into complying with the cease and desist portion of the letter, where they’re going to cease using the name or any derivation of the name. Potentially and make some disclosures to your attorney, which will help you understand whether or not they’re using the mark in other forms that you can’t see.

One of the big things that a trademark lawyer will always do in the cease and desist portion of the letter is demand more information, right? Because you many only be seeing the tip of the iceberg, and the trademark infringement might run really deep underneath that tip. So, you certainly don’t want to get into a situation where you resolve an issue with someone who’s infringing your trademark on a particular domain name, without realizing that they may have registered 50 other variations of your trademark as domain names.

You certainly don’t want to give a trademark infringement general release, where you release some of any liability, if you don’t fully understand the situation. So, the trademark infringement threat letter that is going to be the most aggressive form is going to threaten immediate litigation if they do not comply with the demands set forth by your attorney in the letter itself.

Now, what I always say is, look at it, you don’t want to get into a situation where you’re simply creating a cease and desist form letter for trademark infringement, or even copyright infringement, because those letters tend to – they smell like form letters, right? What they can suggest to the recipient is that you’re not really serious.

Unless the letter is tailored to the situation in such a way that it makes it clear that you are focused 100% on that infringer, then they sometimes will just throw them in the circular file, in the waste can. Their attorneys will indicate that it doesn’t appear that it’s very serious and they will not comply with the demands that you are seeking. The key to the trademark infringement threat letter model, and notice letter model, is to achieve a result without having to go to trademark infringement litigation, which is much more expensive.

Any good trademark attorney is going to advise you that the cost of trademark infringement litigation can certainly run into the hundreds of thousands of dollars. Given that cost, it’s much better to achieve your result without having to go to court and having to deal not only with your own attorney, but with the lawyer who’s going to represent the defendant.

My name is Trademark Infringement Attorney Enrico Schaefer. I hope you learned something today, and we’ll see you next time.

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