Chapter 18:PROTECTING IP RIGHTS: CEASE AND DESIST LETTER

CHAPTER 18

Protecting IP Rights: Cease and Desist Letter

AT THE FIRST SIGN OF AN INFRINGEMENT , you might choose to use a “cease and desist letter” to try to stop the suspected illegal activity. This procedure is a common and cost-effective method, and often produces results against individuals and smaller businesses, particularly if they have inadvertently “borrowed” your IP. It involves the sending of a letter such as the following directly to the infringer and demanding that the infringer stop all infringing activities and acknowledge your IP rights. Although sending this letter is an inexpensive first step in fighting infringement, there are times when you may not want to use it. For example, you may have evidence that an infringer has substantial assets and production and holds a prior registration of your IP in another country. You may further discover that the infringer has gained exponential growth in market share, has hidden factories and untraceable suppliers, and has made blatant reference in advertising to your company or country as the source of goods. In such event, you can assume that the infringer knows of your IP rights and the value of your IP rights, and further that the infringer is trading on your reputation. You can further assume that a mere cease and desist letter is unlikely to have much effect against someone who is enjoying a substantial profit, but it is likely to tip off the infringer about your intentions, making it easier to hide the evidence that you will need to fight a successful court case. The strategies involved should be discussed with your legal counsel.

Cease and Desist Letter

USE OF FORM The following letter is written in reference to your company. However, you would be wise to consult legal counsel prior to sending a cease and desist letter.

A cease and desist letter that is sent without proper basis could lead to a suit against you for baseless threats made and damage to reputation. Furthermore, a cease and desist letter that comes from your legal counsel is likely to carry the extra weight of “the law” behind it.

CEASE AND DESIST LETTER

[your company name and address] [telephone, fax, and e-mail] [date] [name and address of infringer]

DEAR SIR OR MADAM:

WE HAVE RECENTLY DISCOVERED THAT, WITHOUT ANY CONSENT FROM OUR COMPANY, [your company’s name], YOU ARE [describe infringing activity, SUCH

AS PRODUCING, SELLING, BUYING FOR SALE, AND/OR OTHERWISE PROMOTING, TRANSFERRING, AND/OR MAKING PRODUCTS], INCLUDING [describe specific product or service], THAT [describe IP being infringed, SUCH AS BEAR OUR

COMPANY’S TRADEMARKS OR THAT ARE COPIES OF OUR COMPANY’S DESIGNS OR THAT ARE MADE BY MEANS OF OUR COMPANY’S PATENTED PROCESS]. OUR COMPANY, [your company’s name], LOCATED AT [address] IS THE OWNER OF THE [describe IP owned], WHICH IS/ARE PROTECTED IN [home country] AND IN MORE THAN [number] COUNTRIES WORLDWIDE. OUR COMPANY PROTECTS, USES, AND PROMOTES ITS RIGHTS IN THIS INTELLECTUAL PROPERTY THROUGHOUT THE WORLD. WE HAVE HIGHLY VISIBLE ADVERTISING AND PROMOTIONAL CAMPAIGNS WITHIN THE [industry/public at large]. AS A RESULT, OUR NAME AND REPUTATION ARE WELL-KNOWN AND OUR PRODUCTS AND SERVICES ARE UNIQUELY ASSOCIATED IN THE MINDS OF THE TRADE AND PURCHASING PUBLIC WITH OUR COMPANY AND NO OTHER PERSON OR COMPANY.

YOUR USE OF OUR INTELLECTUAL PROPERTY IS A VIOLATION OF OUR EXCLUSIVE RIGHTS GRANTED IN OUR REGISTRATION, AND FURTHER IT IS LIKELY TO CONFUSE THE PUBLIC AND MAY AMOUNT TO UNFAIR COMPETITION. WE ARE CERTAIN THAT YOU DO NOT WANT TO FOSTER SUCH CONFUSION, TO CONVEY A FALSE AND MISLEADING IMPRESSION AS TO THE SOURCE OF PRODUCTS AND SERVICES, OR TO TRADE ON OUR REPUTATION. THEREFORE, WE DEMAND THAT YOU: 1. CEASE AND DESIST ALL USE OF OUR COMPANY’S INTELLECTUAL PROPERTY IMMEDIATELY.

2. DESTROY OR ORDER THE DESTRUCTION OF ALL SAID INFRINGING MATERIALS, INFORMATION, PRODUCTS, AND OTHER ITEMS NOW IN YOUR POSSESSION OR THAT COME INTO YOUR POSSESSION IN THE FUTURE.

3. CEASE AND DESIST FROM USING ANY INTELLECTUAL PROPERTY CONFUSINGLY SIMILAR TO OUR COMPANY’S INTELLECTUAL PROPERTY.

4. TAKE ALL NECESSARY STEPS TO TRANSFER IMMEDIATELY TO OUR COMPANY ANY AND ALL REGISTRATIONS OF INTELLECTUAL PROPERTY THAT ARE IDENTICAL OR SIMILAR TO OUR COMPANY’S INTELLECTUAL PROPERTY.

5. TAKE ALL NECESSARY STEPS TO AVOID ANY FURTHER INFRINGING ACTIONS IN RELATION TO OUR COMPANY’S INTELLECTUAL PROPERTY.

6. PERMIT REPRESENTATIVES OF [your company’s name] TO INSPECT YOUR PREMISES DURING REASONABLE BUSINESS HOURS AND WITHOUT ADVANCE NOTICE TO ENSURE THAT INFRINGING PRODUCTS ARE NOT PRESENT.

7. EXECUTE THIS LETTER BELOW AND RETURN IT TO US BY [date] AS YOUR WRITTEN ASSURANCE THAT YOU WILL SUBSCRIBE TO THE FOREGOING.

PLEASE NOTE THAT AN INFRINGER MAY FACE SUBSTANTIAL CIVIL LIABILITY, INCLUDING AN AWARD OF DAMAGES AND ATTORNEY FEES FOR WILLFUL VIOLATION AND WILLFUL INFRINGEMENT OF OUR COMPANY’S INTELLECTUAL PROPERTY. IF YOU HAVE QUESTIONS CONCERNING YOUR RESPONSIBILITIES AS STATED HERE, YOU ARE ADVISED TO CONSULT LEGAL COUNSEL. NOTHING IN THIS LETTER SHOULD BE CONSTRUED AS A WAIVER OF ANY OF OUR COMPANY’S RIGHTS, ALL OF WHICH ARE EXPRESSLY RESERVED. IF WE DO NOT HEAR FROM YOU ON OR BEFORE [date], WE SHALL TAKE ALL NECESSARY LEGAL STEPS TO STOP THE INFRINGEMENT OF OUR INTELLECTUAL PROPERTY.

SINCERELY, [your company’s name] [signature] [typed name and title]

ENCLOSED: REGISTRATION

I, (NAME), AS THE (TITLE) OF (NAME OF COMPANY OR STORE) LOCATED AT

(ADDRESS, CITY, STATE, COUNTRY) HEREBY AGREE AND UNDERTAKE TO CEASE AND DESIST ALL ACTIVITIES AS STATED IN THE ABOVE LETTER WITH REGARD TO ALL AND ANY OF THE INTELLECTUAL PROPERTY OWNED BY [your company’s name]. FURTHER, I AGREE AND UNDERTAKE TO DESTROY OR ORDER THE DESTRUCTION OF ALL SAID INFRINGING MATERIALS, INFORMATION, PRODUCTS, AND OTHER ITEMS NOW IN MY POSSESSION OR THAT COME INTO MY POSSESSION IN THE FUTURE. I ALSO AGREE AND CONFIRM THAT REPRESENTATIVES OF [your company’s name] MAY INSPECT MY PREMISES DURING REASONABLE BUSINESS HOURS AND WITHOUT ADVANCE NOTICE TO ENSURE THAT INFRINGING PRODUCTS ARE NOT PRESENT. I UNDERSTAND THAT INFRINGEMENT OF INTELLECTUAL PROPERTY IS A SERIOUS OFFENSE AND THAT I MAY BE LIABLE FOR DAMAGES TO [your company’s name], AND FURTHER THAT [your company’s name] HAS WAIVED NO RIGHTS WHATSOEVER IN THIS REGARD BY THIS CEASE AND DESIST LETTER.

EXECUTED ON (date).

BY: (company name) (signature) (printed name) (printed title)