It is important to not get threatened by a Cease & Desist letter and think through things calmly, which helps to adopt the best course of action. While not many small-time entrepreneurs and creative professionals have business advisors, it is advisable to also consult people who can look at the business side of this situation and help you lay a strategy that will prevent your business and money from being swamped by a bigger business and its justified/unjustified claims.
This rise of stolen creative material, counterfeit products and fudged services in the market today brings to light the menace of trademark misuse and infringement, which can be timely countered if the registered proprietor is sufficiently alert to guard his ownership of trademark rights.
The Cease and Desist letter, also known as infringement letter or demand letter, therefore, is a cost-effective means employed through which an individual or a business is demanded to halt allegedly unlawful activity (cease) and to not take it up again later (desist). This notice/letter may also demand compensation to the extent of trademark violation committed.
Sending of a Cease and Desist letter is not usually legally binding, and is merely ancillary to any future legal actions that may be taken against the trademark infringer. The idea behind this is to amicably resolve the matter rather than going through a litigious process.
Though used in many different situations- such as in cases of defamation (libel and slander), breach of contract and debt collection; Cease and Desist letters are mostly used in connection with purported infringement of the bundle of IP rights, such as trademarks, copyrights and patents.
How to respond when you receive a Cease-and-Desist Letter
While it is verily possible to receive a C & D letter for intentional trademark infringement on the recipient’s part, there have been cases where people have received such unwarranted threats, as had happened in the case of Jake Freivald v. West Orange.
Numerous small business owners, bloggers and photographers receive such notices. So whether the alleged infringement has been unintentional, born out of an ignorance as regards the existence of similar well-known trademarks in the industry or a different industry, or plain unjustified (and is a merely used as a means of threat), it is important to follow these steps to adequately respond to such a notice.
Here are a few steps you can take to respond to a Cease and Desist letter:
- Review the material facts – The first step is to thoroughly read all the contents of the letter and the allegations levied in the same, and gauge for yourself if the letter really has merit. Many a time lawyers from the opposing party simply send threat letters to make you comply with their demands. At this stage, you need to be calm and not panic.
- Immediately get the best legal help you can afford – Many a time recipient of such notices tend to ignore them, either due to their ignorance of the significance it implies or because they do not know how to respond to this kind of scenario. But once you have reviewed the C& D letter properly, it is advisable to hire an experienced lawyer at the earliest who can help you go through the process.
- The lawyer may, according to the severity of the allegations made, will either advise you to comply with all of the demands, some of the demands, ignore it altogether (where the letter is merely a bogus claim) or fight back with a solid defence. A Cease and Desist Letter is usually an ancillary warning issued to the supposed infringer to stop any unlawful activity that may be harming the goodwill and reputation of the original owner. This is done to not jump into litigation right away. So you could, with the help of your lawyer, either deny the accusations, negotiate (for a license that would permit you to use the owner’s mark with his due permission) or, in the worst-case scenario, file a lawsuit before the other party does.
- Draft a credible response with the substantial evidence – Where it is ascertained that the demand claims are severe and that you do want to respond to the same, make sure your reply is based on facts and not mere denial of allegations. You can send them your own cease and letter drafted by your attorney and launch a powerful counterattack, based on the opposing party’s weak hold over the disputed IPR (as was done by Facebook after Yahoo sued the giant for patent infringement). You may also put in a word as regards negotiation, and work towards a more collaborative and amicable resolution of this matter.
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