If you’ve become aware of someone using your trademark, should you send them a cease and desist letter?
In a developing trend towards litigation, trademark attorneys have recently been foregoing the use of cease and desist letters previously considered routine. Instead, as their opening move to enforce a client’s trademark rights, they often immediately file a lawsuit or file for a preliminary injunction. In light of this trend, it’s important to consider whether the use of a cease and desist letter as a first move is the right one in resolving a particular trademark dispute.
In this first of a two-part series identifying factors to consider when deciding whether to use a cease and desist letter in an overall trademark enforcement strategy, we introduce cease and desist letters and discuss their potential benefits in trademark disputes.
What is a Trademark Cease and Desist (C&D) Letter?
A C&D letter is one option a trademark owner has to help them enforce trademark rights. An effective C&D letter clearly identifies the alleged trademark infringement and states the trademark owner’s specific demands on the other party. Often a trademark owner’s demand is for the other party to stop using the allegedly infringing mark either immediately or within a specified time period. A C&D letter might also request assurances the infringement will end or threaten litigation to dissuade continued infringement.
What Are the Potential Benefits of Sending a C&D Letter?
First, the C&D letter’s greatest strength is its potential to enforce trademark rights without costly and protracted litigation. A C&D letter is an opportunity to resolve a dispute amicably outside of court. It’s not always clear whether a trademark dispute requires litigation to be resolved. The process of researching, drafting and reviewing responses to a C&D letter can help assess the need to spend substantial time and resources litigating. And if a C&D letter is successful in resolving the dispute, the process is much faster and less costly than litigation.
Second, if a C&D letter is crafted with the appropriate tone, it can potentially lead to business opportunities for a trademark owner, such as licensing revenue. With the help of an experienced attorney, a flexible and practical resolution may be reached through negotiation, for example, in the form of a licensing agreement or other tailored agreement with mutually beneficial terms.
Third, a C&D letter creates a written record of trademark enforcement activities by the owner. This record may be useful in future disputes as evidence that a trademark owner has a history of defending and enforcing their trademark rights. This helps protect a trademark’s strength and the brand’s exclusivity, and helps to prevent confusion and others from trading on a brand’s goodwill.
Fourth, a C&D letter may create evidence of willfulness. A C&D letter can help build the trademark owner’s case in the event the dispute is litigated. If an infringing party ignores a C&D letter and doesn’t respond, this may provide evidentiary support in future litigation that infringement was willful. A finding of willfulness potentially can allow for enhanced damages against a party found liable for infringement.
We hope this has been a helpful starter guide to trademark C&D letters and whether to use one to enforce trademark rights. In our upcoming second installment of this series, we will discuss the potential drawbacks of using trademark cease and desist letters, as well as common responses a trademark owner can expect to receive after sending a C&D letter.
Armin Ghiam is a partner in Hunton Andrews Kurth’s Intellectual Property group in the firm’s New York office. Jeremy Boczkois a partner in the firm’s Intellectual Property group in its New York office. Sarah Spellmanis an associate in the firm’s Corporate and Securities Litigation group in its New York office.
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