Cease and Desist Letters to Protect Your IP: Just the Facts and Law

My law firm often gets calls from companies alleging “a company is selling their product under their trade name on Amazon” and asking us to send a cease and desist letter “right away” to get that company to stop violating their IP. Our typical response is to say it is seldom a good idea to just “whip out” a cease and desist letter. We need to know more of the facts first, and then plan a strategy after that. The facts influence whether a cease and desist letter makes sense at all (they usually do), and what we will say in that letter.

The goal is to get the infringing company to stop shipping the infringing product outside China (or Vietnam or Malaysia or Thailand or Mexico or Indonesia or India, or wherever else it is making the product) without our client having to incur the cost, hassle, and delay of bringing a lawsuit.

I was reminded of this the other day after being cc’ed on emails between a couple of my law firm’s international IP lawyers. One of the emails note how we first must gather the relevant facts before we can send a cease and desist letter because sending such a letter might prompt its recipient to file a lawsuit against our client, seeking a court order that our client does not have any basis for challenging the recipient’s IP usage.

It reminded me of a company who paid a lawyer $250 to send out a cease and desist letter and then got sued for millions by the big company recipient of that letter. This company wanted to know if we could defend them in this complicated international litigation matter for a $25,000 flat fee, because that was all it could pay. I said that would not be possible and maybe they should see if the lawyer who sent the cease and desist letter might at least share in the litigation costs. I never heard back from this company and — not surprisingly — it appears to no longer exist.

But I digress.

The email lists out the following questions to which we need answers from our client to position us to determine an optimal cease and desist strategy:

  • When were you founded, and when did you begin commercial operations?
  • When did you start selling ______ product?
  • When did your website first go live?
  • When did you begin selling _____ product on your website?
  • Do you sell and/or ship ______ product in every state?
  • What marketing activities have you undertaken in the various states?
  • When were you made aware that ______ company’s products were being sold in the United States?
  • Are ________ company’s products sold only through Amazon?
  • When did you file your U.S. Patent and Trademark Office (“USPTO”) trademark registrations?
  • What pre-application trademark searches did you or anyone else conduct in the United States concerning the marks _______ and _______?  If you have any pre-application search results/materials, please email those to us.
  • Have you registered your image copyrights?  If so, when?
  • Did you create the images or were these created for you by an agency?  If by an agency, did you sign an agreement with the agency pursuant to which you own the images?  If so, please email us a copy of the agreement.
  • If possible, please email copies of the images the _____ company is infringing.

It pays to have the facts before acting.