When drafting a cease-and-desist letter on behalf of a client, various factors such as the recipient(s), content, and tone need to be carefully considered. Further details on each are placed below, as well as the types of demands to consider including.
When determining who should receive a cease-and-desist letter, it's important to consider efficiency-based factors, including location, responsibility, and authority, and to conduct due diligence to confirm each recipient's status and address. The letter should be addressed to identifiable individuals with authority and not be solely reliant on the recipient's website or WHOIS registry, and should not be sent to persons with no legitimate interest in the dispute as seeking publicity for a claim of infringement can backfire and create a counterclaim.
Trademark cease and desist letters are often based on templates but require careful customization to avoid misidentification. These letters should include identification of the parties and relevant marks, details of the infringement, and evidence of bad faith adoption. They should also state action already taken, demand action from the recipient, specify a response deadline and any consequences of non-compliance, and include a disclaimer of all client rights. Relevant exhibits may be attached.
Considerations for the tone of a cease-and-desist letter include: the objective of the letter, potential for a negative social media response, potential for a future business relationship, length of the allegedly infringing use, and the client's commitment to litigate.
· The tone of the letter may vary depending on whether the client's objective is to educate or to take a more aggressive stance. Other objectives may require a different tone.
· In today's Internet age, a cease-and-desist letter may be published online and viewed out of proportion to the issue at hand. The tone of the letter should be adjusted accordingly.
· If a future business relationship is possible, the letter should reflect a desire to reach a mutually beneficial resolution.
· The tone of the letter may vary depending on the length of the allegedly infringing use.
· The language of the letter should reflect the client's intention to litigate, if necessary, but empty threats should be avoided.
Demands and Requests:
Cease and desist letters can vary in their level of aggression and demands. Some may express concern over the recipient's use and ask what steps the recipient will take to address the issue. Others may demand a prompt cessation of use, a cessation of use with a phase-out period, or more extensive demands such as an accounting and/or destruction of products bearing the mark at issue. Letters may also request that a landlord take action against a retailer who is operating under an infringing name or selling infringing goods. Demands can vary depending on the case, and there is sample language that may be used in each situation.
May 2, 2023