Four steps to take the heat out of a cease-and-desist letter

It’s the correspondence that no one wants to receive: a cease-and-desist letter, informing the recipient that they are infringing Intellectual Property (IP) with the request that they immediately stop the alleged infringement, or withdraw a trade mark application.

So what now?

Craig Beaumont, a Chartered Trade Mark Attorney experienced in handling trade mark infringement and opposition matters, recommends that you address these factors without delay:

1.      Acknowledge the letter

As this recent case study article demonstrates, not all cease-and-desist letters are justified or legally sound. I would advise not to jump to any conclusions or respond to the points raised in the cease-and-desist letter straightaway. A simple email to tell the sender that you have received it would be appropriate.

2.      Don’t ignore deadlines

Have you been set a response time? Do not bury your head in the sand: you need to act quickly. A reasonable amount of time should be given to the recipient to respond to the claims set out in the cease-and-desist letter. This is particularly important when the recipient does not have a legal representative. That said, the response period is still usually around 14 days.

3.      Familiarise yourself with the contents of the letter

The other side must give you sufficient detail so that you understand the basis of their claims. If any of their claims seem bare or obscure, it is justifiable to seek further clarification. Although the approach may be a thorn in your side, it is best to ask yourself: “am I happy to do what the other side ask?”. If the answer is yes, perhaps it is better just to agree to the other side’s requests. This is likely to be the case where there would be little to no impact on your business. These types of settlements are sometimes recorded in a written agreement.

4.      Contact a lawyer

If you are feeling uncertain about the strength of the other side’s case or unsure about how best to proceed, I would recommend contacting a Chartered Trade Mark Attorney. They will help evaluate the cease-and-desist letter to establish:

  • whether the other side actually possesses the IP rights they claim to have;
  • whether those IP rights are broad enough to raise a valid claim against you in any formal action;
  • whether there are any relevant defences available to you;
  • the relevant procedures and the likely impact on your business which could be legal, financial or commercial;
  • the options for going forward.

It might be the case that your attorney needs to argue why all or some of the claims are unfounded, and say that you are fully prepared to defend any formal action. If it is possible to avoid formal action and safeguard your position at the same time, it may be worthwhile setting out a possible counterproposal to the sender. If they are reasonable, they are likely to be open to this.

Above all, don’t panic. In most cases a mutually agreeable resolution is achieved, and both sides can get back to focusing on their businesses.

Barker Brettell has a specialist team of Chartered Trade Mark Attorneys who can assist and advise you. To continue the conversation, please contact the author or your usual Barker Brettell attorney.