All You Need To Know About Cease & Desist Letters
What Is A Cease And Desist Email/Letter?
A cease and desist email/letter, also known as a demand email/letter, is essentially a correspondence stating that you are infringing another person’s trademark and must stop doing so. It can also instruct you to stop the use of the said mark altogether. Any such email/letter must be taken seriously. Immediately after you receive any such demand letter, it is important that you contact a qualified attorney who can properly inform you of your rights and skillfully consider all your options.
What Are Your Options?
You can respond to cease and desist letters in several ways. All these options have different legal ramifications, and hence, you will want to consult an intellectual property law attorney who is experienced in such disputes and can offer you expert intellectual property advice, specific to the alleged infringement. You can choose from the following options:
You can respond to the email/letter and deny infringement if you think you have solid grounds for doing so. You can also respond and request specific evidence of infringement and why the owner of the intellectual property (i.e. trademark, copyright, patent) believes that you are infringing his/her property. This includes evidence of whether or not the intellectual property at issue has federal registration.
You can also choose to do nothing and not respond to the letter or any follow-up ones. Some cease and desist letters are sent to mislead or intimidate recipients into paying for the use of a mark or stopping them from doing so even though they are not obligated or required to do so. That said, you should not make this decision lightly, as if you choose to do nothing without first consulting a qualified attorney, you could be at substantial risk. This means that if you are found liable for an infringement at a later stage, the court may instruct you to pay additional monetary damages and deem you reckless, as your infringement following the receipt of the cease & desist letter will likely be deemed to be willful.
You can also choose to negotiate with the owner of the intellectual property for a license that permits you to use the trademark(s), copyright(s) and/or patent(s). This would, of course, be on mutually agreeable terms. You can also negotiate with the owner to get an agreement stating that you will not infringe the trademark again. Again, in any such negotiation it is incredibly important to have a highly skilled intellectual property attorney represent you, in order to ensure your rights are properly protected.
File A Lawsuit
You can also consider suing the owner of the intellectual property for a declaratory judgment. You can state that your mark in no way infringes the trademark of the owner. Filing a suit for declaratory judgment may be advantageous for a number of reasons, including the ability to choose a convenient venue in which to bring and hear the lawsuit. Speak with your attorney if you are thinking about obtaining a court order through declaratory judgment to defend against infringement claims made in a cease & desist letter.
An attorney who is an expert in intellectual property law and practices in the state can help you make an informed decision between all these options.
Is A Cease And Desist Letter Equivalent To Being Sued?
If you receive a cease and desist letter from a certain party, it does not necessarily mean that you are being sued. Typically, when an intellectual property owner files a federal lawsuit against you, he/she must serve you with two documents. This includes a complaint that mentions the claims that have been made against you and a summons that a clerk of court issues. This summons tells the court why you are being sued. It also contains a case identifying number and lets you know if you are required to reply to the complainant’s letter formally. The documents will be delivered to you either personally or through a registered business agent. Hence, you will know if/when you are being sued, thanks to this service requirement. Sometimes, however, a complaint and summons may be included as attachments to cease & desist letters.
Therefore, it is highly recommended that you immediately consult with an intellectual property law attorney if you have reason to believe that you are being sued, or have received a cease & desist letter. They can help you make an informed decision by telling you everything about what intellectual property law protects and how you can respond to an infringement claim.
What To Do If The Intellectual Property’s Registration Was Canceled, Has Expired, Or Is Not Federally Registered?
It is of paramount importance to note that you do not always require a federal registration to establish intellectual property rights. For instance, if a trademark’s registration is canceled or has expired, the trademark owner will still have common law rights in the mark.. Common law rights refer to the actual usage of a mark for certain goods or services in specific geographic locations. This law allows common law users to challenge the use of another party’s confusingly similar mark in court, even in the absence of a federal trademark registration.
Do I Require An Attorney?
While it is not mandatory for you to avail yourself of the services of an expert attorney in order to understand and respond to a cease and desist letter, a qualified attorney can help you understand the strengths, as well as weaknesses, of the allegations that have been made against you. They can also help you make an informed decision by understanding the scope of trademark rights. Although the representation and advice of licensed intellectual property lawyers may appear expensive, using their assistance can prove to be incredibly valuable, saving much more than the costs in the long run. A skilled intellectual property law attorney can assist you in the navigation of negotiation with the plaintiff, streamline the process and save you additional legal problems.
Reyes & Schroeder Associates, P.C. are dedicated to protecting your rights. We are a professional corporation law firm that can help you with intellectual property cases competently. For a consultation, get in touch with us at (323) 553-1541 or firstname.lastname@example.org.