Cease and desist letters can be used for more than stopping trademark infringements — they can be invaluable marketing opportunities.
“There are a lot of ways to turn a possible negative into a real business positive,” says Tom Speiss, shareholder and trademark attorney at Stradling Yocca Carlson & Rauth. The letter could be used to initiate a conversation about a potential acquisition or licensing opportunity.
“You want all CEOs and key decision makers to read your letter and say, ‘This is a company we need to meet,’” says Speiss.
Smart Business spoke with Speiss about how to capitalize on cease and desist letters.
What is a trademark cease and desist letter?
Simply put, if a company owns a trademark and sees another using it in the same space, the letter is intended to get your competitor to ‘cease’ using your mark. Rather than filing suit, which should be a last resort, a well-crafted letter with your position statement and a clear articulation of your rights to the mark may be all you need.
Are certain elements necessary for the letter to hold legal significance?
The best offense is a well-planned defense. First, you must be able to confirm receipt of the letter. If you later file suit, you will have proof that your competitor received the letter, giving you a better opportunity to claim damages, especially if willful infringement can be proven.
Second, the message in the letter needs to be clear. It should state that you have superior rights to the mark, what those specific rights are, and it should include the trademark registration number. Specific is terrific here — there should be no doubt about what you are claiming and how you’d like to remedy the situation.
How can you ensure the letter has the intended effect?
Do your research. Make sure you are well within your rights before asserting a claim. Once the alleged infringer receives the letter they will likely conduct their own investigation about your company, so be prepared.
Then order a trademark search report. The report will give you a more complete picture including: a list of applications and registrations at the U.S. Patent and Trademark Office, a list of abandoned and pending marks, state registered marks, business and domain names, and Web use. You will want to have a solid case for your claims before you draft the letter.
How could it be used as a marketing opportunity?
We all have one chance to make a first impression. This is a terrific opportunity to demonstrate your industry prowess and position your company as a viable suitor or partner. Perhaps you are a prime acquisition target. Or, maybe your strategy includes growth by strategic acquisition. Maybe there’s a licensing deal in your future. Whatever the case may be, if the recipient of your letter sees you as a clean and professional organization, this could be one way to start the conversation toward something much greater.
How would you advise companies considering this strategy?
Think with the end in mind. Before you write the letter, think about your desired outcome and talk about it internally.
You will want to make sure the letter is accurate and viable so you can continue to pursue your desired opportunities in the marketplace. Then, put your best foot forward. Keep in mind, your letter may be read by unintended recipients such as news media or your main customers.
If you write a strident and aggressive letter, your competitor may find a way to use it against you in the marketplace. Don’t let them do that. Make sure you give your recipient a reasonable ‘out’ by not forcing them to mount an aggressive defense out the gate. When done right, you could turn your competitor into an ally.
Tom Speiss is a Shareholder at Stradling Yocca Carlson & Rauth. Reach him at (424) 214-7042 or [email protected]
Website: Find Tom Speiss’ profile at www.sycr.com/thomas-j-speiss-iii.
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