Cease-and-desist letter

Definition

A cease-and-desist letter is a letter, email or other form of communications demanding that the recipient refrain from a certain behavior or face legal action.

Overview

Some types of behavior that may prompt such letters include:

• copyright infringement
• trademark infringement
• patent infringement, and
• defamation.

In the case of copyright, trademark or patent infringement, and defamation, the letter typically threatens a civil lawsuit if the recipient continues the undesired activity. It is similar in form, although not in function, to a demand letter, which alerts the recipient to a pending claim for money damages, usually as a result of a tort or a breach of contract.

The normal goal of such a letter is to obtain early resolution of the matter and spare both parties the time and expense of a civil litigation.

In the United States, a recipient of a cease-and-desist letter who is placed in a "reasonable apprehension" of litigation may respond through a request for declaratory judgment proceeding in his own jurisdiction.

Trademark infringement letter

The typical format of a Trademark infringement cease-and-desist letter notifies the alleged infringer of the trademark owner’s rights, explains why the trademark owner believes confusion (or if appropriate, dilution) is occurring, or likely to occur if the alleged infringer continues use of its mark, and sets forth the trademark owner’s demands that the alleged infringer take certain actions (e.g., ceasing use, abandoning trademark applications, surrendering domain names, obliterating the mark from existing products, limiting use to a certain manner and scope, paying profits, and the like). The letter also usually requests a response by a specified date or within a specific time frame.

The demands in the letter and the tone (threatening or conciliatory) may vary depending on the facts and circumstances presented. If a violation is sufficiently problematic that the trademark owner is prepared to litigate immediately, the letter may threaten such litigation if the violator fails to comply with the demands set forth in the letter. The letter may even be accompanied by a courtesy copy of a complaint that has been or will be filed if the matter cannot be expeditiously resolved to the satisfaction of the trademark owner.

Upon receiving a demand letter, the recipient may respond on its own or consult with trademark counsel. Often, counsel will send a “hold” letter to buy time to investigate the merits of the trademark owner’s claims, consult with the client, and prepare a response.

Responses to a cease-and-desist letter generally fall into three main categories:

1. The alleged violator agrees to comply with the trademark owner’s demands and/or stops using the offending trademark. If this occurs, the parties may memorialize this in writing with either a written response letter that resolves the matter, or if the matter is more complex, via a settlement agreement.
2. The alleged violator does not respond within the specified time frame. At this point, the trademark owner often will send a follow-up letter. If no response is forthcoming, the trademark owner will either decide to drop its effort and acquiesce in that party’s use, or the trademark owner will continue to pursue the matter by filing a lawsuit (typically in a federal district court). If the trademark owner’s concern relates solely to efforts to register a mark, the owner may opt to file a proceeding with USPTO’s TTAB to petition to cancel a registration or oppose an application, instead of filing a district court action.
3. The alleged infringer denies the allegations of infringement and/or asserts various legal defenses justifying its ability to use its mark, files a declaratory judgment action, or offers a compromise solution for going forward. If the response presents compelling facts or legal points that the trademark owner may not have known or failed to consider, the owner may decide to pursue settlement or drop its claims altogether (e.g., if it turns out the alleged infringer can show that it has priority of use). If the trademark owner does not believe settlement is possible, the trademark owner usually will continue to pursue the matter by filing a lawsuit or initiating a cancellation or opposition proceeding with USPTO’s TTAB.