Crafting the Effective Trademark Cease-and-Desist Letter

Good cease-and-desist letters have benefits in addition to the quick resolution of a dispute. They can begin to set the tone of contention and the relationship of the parties if litigation ensues and can help maintain the businesslike and professional demeanor that can be useful for an ultimate resolution of a dispute. Even without settlement, they are almost inevitably an exhibit in an action and, if well done, are important in establishing the persuasive argument and narrative for the case that ideally should continue to the action's ultimate resolution.

Poorly done cease-and-desist letters that are, for example, overly aggressive, lightweight, inaccurate or formulaic, can have many deleterious consequences. Most obviously they can be ineffective. They can cast doubt as to the seriousness of the claim. They can give rise to claims of trademark bullying and create unnecessary hostility and resistance. They can be the subject of bad and derisive publicity. They can lead to unnecessary litigation. All this costs time and money and detracts from the efficacy of the claim.

In addition, poorly crafted cease-and-desist letters can create weaknesses that may be exploited in litigation. Letters that appear to be unnecessarily hostile or overreaching can hurt a party's standing in front of a judge or jury and can begin to create a degree of hostility with the other party that will cause the case to be unduly contentious and poison a reasonable resolution. On the other hand, letters that belie the seriousness of the claim or the demand for relief can undermine the narrative of significant wrongdoing by the defendant that a plaintiff is seeking to establish.

Goal Is Persuasion

It is important to keep in mind when crafting a cease-and-desist letter that it is not just about advising another about violated rights and a demand for relief. Almost always, a cease-and-desist letter is fundamentally about persuasion. It has to be crafted to persuade someone to accept a loss and to overcome inertia ' a current or planned course of doing business ' and usually a recipient's sense of entitlement and self-righteousness.

As with any persuasive communication, the purpose of the letter and its goals must be kept forefront in mind. The whole approach of the letter should be dictated by the relief that is being sought. Often in a trademark dispute, the goal is just to get the recipient to stop using a mark or trade dress. But, the purpose might also be to seek damages, obtain a domain name or mark, or seek some other business solution. In addition, the letter's purpose could be to serve as a warning shot and define the limits of behavior that is acceptable or not acceptable.

Degree of Harm

In fashioning the letter or determining even whether a letter should be sent, consideration needs to be given to the degree of harm that the behavior that is the subject of the demand is causing or is likely to cause and whether that harm is immediate or long term. Among other things, this will influence the tone that is adopted, the time given for a response, and the degree of threat that is made. For example, if the harm is great or imminent, the letter may just begin with a flat statement that the letter represents the only opportunity that recipient has to avoid being sued in federal court by a certain date. This kind of opening generally excites attention and provokes a response.

Strategy

Thought must be given to the strategic considerations surrounding the dispute. These considerations are not limited to the strategy for the resolution of the dispute, but should encompass the overall strategy for the protection of the rights that are the heart of the dispute and business purposes relating to the dispute. For example, some questions that should be considered are whether the dispute is an industry-wide problem, is it reoccurring, and what is the enforcement strategy for the brand? The business considerations obviously are critical issues; as the letter is not an academic exercise, but must serve the greater goals of the business in terms of the rights being protected and the harm to the company caused by the activities that have created the dispute.

Elements of Persuasion

In drafting a cease-and-desist letter there are four primary elements of persuasion that are most often utilized: apprehension, reason, empathy and reward.

Apprehension

The most obvious tool of persuasion with a cease-and-desist letter is creating apprehension. In almost all letters, the threat of lawsuit and its consequences is the driver of the demanded action. The threat can be explicit or implicit. There is no need to tell someone that getting involved in a legal dispute, even without litigation, is expensive in time, cost and energy and that it is something to be avoided if possible. Therefore, just making a claim of infringement of rights should create some apprehension. The decision whether to threaten a lawsuit is a more nuanced determination.

Prior to the Supreme Court's MedImmune decision and its progeny, practitioners often would not explicitly threaten an action in order to avoid creating a reasonable apprehension of a suit that would allow the recipient to bring a declaratory judgment action. Now, almost any protest will create a dispute that gives the recipient the ability to bring a lawsuit. Accordingly, the concern whether a declaratory judgment might be brought should have little weight in deciding whether to threaten a lawsuit. If a declaratory judgment is a significant issue because of the location of the action, then a lawsuit should be brought in the preferred jurisdiction and, if desired, a letter could be sent hard on the heels of its filing.

An explicit threat of a lawsuit to a large organization might have the opposite effect than that desired. It may cause the claim to automatically be farmed out to an outside counsel causing significantly more expense and hinder resolution. If the threat appears to be disproportionate to the claim, the reaction of a sophisticated recipient may be dismissive. An individual or a small company may treat a threat of a lawsuit as an opportunity for publicity or, if the claim implicates a first amendment right, might allow it to obtain the services of a social justice firm to defend its rights.

Other means of creating apprehension beyond an overt threat of a lawsuit or an explication of the possible consequences of an action, such as damages and disgorgement of profits (trebled), costs, attorneys' fees, etc., are references to the size and renown of the trademark owner, a specific recitation of statutes violated, and a detailed recitation of a factual background, including, if applicable, a claim of actual confusion, which indicates the strength of the claim and/or the ongoing harm. In some instances, the results of a preliminary survey showing likely confusion could be included in the letter. This would demonstrate a very serious protest by a determined complainant. Apprehension also might be increased by pointing out cases brought to end similar behavior. Sometimes a draft complaint or a filed but not served complaint is attached to a letter to indicate the seriousness of the issue and the complainant's resolve ' but leaving some room for non-judicial resolution.

Additionally, if the recipient is a supplier or has another relationship with the trademark owner, the letter can be crafted in a manner that would suggest the damage that might be done to that relationship if the complained of behavior continued. Further, the letter may indicate directly or indirectly that the recipient's reputation in the trade or industry might be harmed if its objectionable behavior continued.

Reason

Fear is not the only motivator. A good cease-and-desist letter must provide rational, objective reasons for the demand to change the recipient's behavior. Obviously, the letter should set out the rights that have been infringed and the basis for relief if the dispute cannot be settled without judicial intervention. Like Macbeth's wife, one can protest too much. Excessive explanation and citation of authority tend to weaken an argument and raise doubt in the mind of the recipient.

Empathy

Further, the letter should explain the harm being caused and the reason that complying with the demand is the right thing to do. To the extent possible, one objective is to create some empathy in the wrongdoer so she knows the reason she is receiving the letter. At a most basic level, the complainant may say, “We've got to do this; we are required to protect our rights.” But, often the protester also will want to empathize with the wrongdoer. For example, sometimes it may tell an in-house counsel or head of business essentially “I'm sure that if you knew what was going on, it would have never have happened, and now that you know, I'm sure that you will fix the problem.” Another example of empathy is advising the person violating rights that if she knew the consequences of her action ' the rights being violated and the harm that was being caused ' she would do the right thing and put an end to her infringing behavior.

Reward

It is almost always good to point out the benefits that a resolution will cause. This can be blunt ' “This is your last chance to avoid a lawsuit in federal court and the attendant costs and damages.” Or, it can be more nuanced where a graceful exit from a dispute is offered. Sometimes, albeit rarely, an offer can be made to pay the recipient to end its activities. For example, an alternate resolution could be offered to buy an existing inventory if the sales of the infringing product are stopped within a short period of time.

In suggesting the resolution, as all elements of the cease-and-desist letter, it is imperative that recipient and its likely reaction is considered carefully. Are they sophisticated? Do they have a history of aggressive, reasonable, or rationale behavior? Is their likely counsel aggressive, reasonable or irrational? At the least, the protestor should gauge its own likely reaction to the letter and draft it in a manner that would most effectively achieve its goals.

Business Tone

Cease-and-desist letters, as indeed all disputes, are emotional. They are about right and wrong, leverage and control, money and behavior ' all very emotional factors. Some cease-and-desist letters are too aggressive and heavy-handed, and trigger an expensive fight where a lighter, more reasoned touch would have generated the best business result. Instead of having an easily resolvable issue over a minor matter, the wrong protest letter can create a sticky situation from which it is difficult to extricate and that makes the client spend lots of money to resolve and, perhaps even worse, makes the client look foolish.

Accordingly, tone is important. The cease-and-desist letter should be serious, business-like and straightforward. It should be in plain language and avoid legalisms, which don't impress anyone. The letter should be honest and credible. If you exaggerate or make errors, it will harm credibility and the seriousness of the claim. For example, not every infringer is a willful predator. Making rash claims of intentional deception and misappropriation of goodwill against people who know that they were not trying to trick anyone does not intimidate. It only annoys and calls into question all the claims made, including the strength of the claim of infringement.

The structure and flow of the letter should be carefully considered for its ability to persuade. Use specific information about the recipient when available. She has to believe that she is the unique target of the protest. The letter should build an argument so that it appears that clear rights have been violated and the solution presented is reasonable and attractive, at least compared to the alternative.

Often, a phone call might be the most effective form of protest and avenue for resolution. This might be from in-house counsel to another in-house counsel where there is a personal relationship or the companies know each other. Also, where the companies in a dispute have a relationship, such as with a supplier, retailer or distributor, a call or meeting by a business person with a contact in the other party's organization often can lead to a quick and amicable resolution of the problem.

A cease-and-desist letter might not be appropriate even if there is a violation of trademark or other identity rights. The best course might be just to sue. This is often the case where the damage is severe or imminent and a preliminary injunction or a temporary restraining order is necessary. Also, sometimes where the infringement is willful or large damages are sought, there simply is no point in sending a letter and engaging in preliminary dialog. Further, a protest letter could be counterproductive in cases that are brought against a particular defendant to establish rights or to send a message or to address industry wide or reoccurring issues, or otherwise where the plaintiff desires a particular forum or time for a lawsuit that might be upset by a declaratory judgment action.

Sometimes, it is just better to let the violation or the possible violation go. This happens most often where there may be significant first amendment or fair use defenses and the objectionable use is so obscure that it has little impact on marketplace. Other examples are where the possible defendant is very sympathetic or otherwise where a protest may elicit negative publicity or ridicule.

Conclusion

The cease-and-desist letter is a worthy object of thought and imagination and requires thought and imagination to be done well. Its virtues are rarely celebrated and are largely hidden. Even so, effective cease-and-desist letters perform a great service to the client and to the community at large.

William G. Pecau, a member of the Board of Editors of this newsletter, is a partner in the Washington, DC, office of Steptoe & Johnson LLP, where he is a member of the Intellectual Property group. He can be reached at [email protected].

The cease-and-desist letter is a routine occurrence in the practice of most trademark attorneys. And, often it is treated routinely ' something that is little more than a form and is given little more thought than a form.

Cease-and-desist letters are common, but they are extremely important. Done well, they are the most efficient and effective means to end infringement and to maintain the parameters of protection of a trademark. They exemplify Sun Tzu's observation in his The Art of War: “The best victory is when the opponent surrenders of its own accord before there are any actual hostilities.” Their very effectiveness tends to make them less visible and underappreciated.

Good and Bad Cease- And-Desist Letters

Good cease-and-desist letters have benefits in addition to the quick resolution of a dispute. They can begin to set the tone of contention and the relationship of the parties if litigation ensues and can help maintain the businesslike and professional demeanor that can be useful for an ultimate resolution of a dispute. Even without settlement, they are almost inevitably an exhibit in an action and, if well done, are important in establishing the persuasive argument and narrative for the case that ideally should continue to the action's ultimate resolution.

Poorly done cease-and-desist letters that are, for example, overly aggressive, lightweight, inaccurate or formulaic, can have many deleterious consequences. Most obviously they can be ineffective. They can cast doubt as to the seriousness of the claim. They can give rise to claims of trademark bullying and create unnecessary hostility and resistance. They can be the subject of bad and derisive publicity. They can lead to unnecessary litigation. All this costs time and money and detracts from the efficacy of the claim.

In addition, poorly crafted cease-and-desist letters can create weaknesses that may be exploited in litigation. Letters that appear to be unnecessarily hostile or overreaching can hurt a party's standing in front of a judge or jury and can begin to create a degree of hostility with the other party that will cause the case to be unduly contentious and poison a reasonable resolution. On the other hand, letters that belie the seriousness of the claim or the demand for relief can undermine the narrative of significant wrongdoing by the defendant that a plaintiff is seeking to establish.

Goal Is Persuasion

It is important to keep in mind when crafting a cease-and-desist letter that it is not just about advising another about violated rights and a demand for relief. Almost always, a cease-and-desist letter is fundamentally about persuasion. It has to be crafted to persuade someone to accept a loss and to overcome inertia ' a current or planned course of doing business ' and usually a recipient's sense of entitlement and self-righteousness.

As with any persuasive communication, the purpose of the letter and its goals must be kept forefront in mind. The whole approach of the letter should be dictated by the relief that is being sought. Often in a trademark dispute, the goal is just to get the recipient to stop using a mark or trade dress. But, the purpose might also be to seek damages, obtain a domain name or mark, or seek some other business solution. In addition, the letter's purpose could be to serve as a warning shot and define the limits of behavior that is acceptable or not acceptable.

Degree of Harm

In fashioning the letter or determining even whether a letter should be sent, consideration needs to be given to the degree of harm that the behavior that is the subject of the demand is causing or is likely to cause and whether that harm is immediate or long term. Among other things, this will influence the tone that is adopted, the time given for a response, and the degree of threat that is made. For example, if the harm is great or imminent, the letter may just begin with a flat statement that the letter represents the only opportunity that recipient has to avoid being sued in federal court by a certain date. This kind of opening generally excites attention and provokes a response.

Strategy

Thought must be given to the strategic considerations surrounding the dispute. These considerations are not limited to the strategy for the resolution of the dispute, but should encompass the overall strategy for the protection of the rights that are the heart of the dispute and business purposes relating to the dispute. For example, some questions that should be considered are whether the dispute is an industry-wide problem, is it reoccurring, and what is the enforcement strategy for the brand? The business considerations obviously are critical issues; as the letter is not an academic exercise, but must serve the greater goals of the business in terms of the rights being protected and the harm to the company caused by the activities that have created the dispute.

Elements of Persuasion

In drafting a cease-and-desist letter there are four primary elements of persuasion that are most often utilized: apprehension, reason, empathy and reward.

Apprehension

The most obvious tool of persuasion with a cease-and-desist letter is creating apprehension. In almost all letters, the threat of lawsuit and its consequences is the driver of the demanded action. The threat can be explicit or implicit. There is no need to tell someone that getting involved in a legal dispute, even without litigation, is expensive in time, cost and energy and that it is something to be avoided if possible. Therefore, just making a claim of infringement of rights should create some apprehension. The decision whether to threaten a lawsuit is a more nuanced determination.

Prior to the Supreme Court's MedImmune decision and its progeny, practitioners often would not explicitly threaten an action in order to avoid creating a reasonable apprehension of a suit that would allow the recipient to bring a declaratory judgment action. Now, almost any protest will create a dispute that gives the recipient the ability to bring a lawsuit. Accordingly, the concern whether a declaratory judgment might be brought should have little weight in deciding whether to threaten a lawsuit. If a declaratory judgment is a significant issue because of the location of the action, then a lawsuit should be brought in the preferred jurisdiction and, if desired, a letter could be sent hard on the heels of its filing.

An explicit threat of a lawsuit to a large organization might have the opposite effect than that desired. It may cause the claim to automatically be farmed out to an outside counsel causing significantly more expense and hinder resolution. If the threat appears to be disproportionate to the claim, the reaction of a sophisticated recipient may be dismissive. An individual or a small company may treat a threat of a lawsuit as an opportunity for publicity or, if the claim implicates a first amendment right, might allow it to obtain the services of a social justice firm to defend its rights.

Other means of creating apprehension beyond an overt threat of a lawsuit or an explication of the possible consequences of an action, such as damages and disgorgement of profits (trebled), costs, attorneys' fees, etc., are references to the size and renown of the trademark owner, a specific recitation of statutes violated, and a detailed recitation of a factual background, including, if applicable, a claim of actual confusion, which indicates the strength of the claim and/or the ongoing harm. In some instances, the results of a preliminary survey showing likely confusion could be included in the letter. This would demonstrate a very serious protest by a determined complainant. Apprehension also might be increased by pointing out cases brought to end similar behavior. Sometimes a draft complaint or a filed but not served complaint is attached to a letter to indicate the seriousness of the issue and the complainant's resolve ' but leaving some room for non-judicial resolution.

Additionally, if the recipient is a supplier or has another relationship with the trademark owner, the letter can be crafted in a manner that would suggest the damage that might be done to that relationship if the complained of behavior continued. Further, the letter may indicate directly or indirectly that the recipient's reputation in the trade or industry might be harmed if its objectionable behavior continued.

Reason

Fear is not the only motivator. A good cease-and-desist letter must provide rational, objective reasons for the demand to change the recipient's behavior. Obviously, the letter should set out the rights that have been infringed and the basis for relief if the dispute cannot be settled without judicial intervention. Like Macbeth's wife, one can protest too much. Excessive explanation and citation of authority tend to weaken an argument and raise doubt in the mind of the recipient.

Empathy

Further, the letter should explain the harm being caused and the reason that complying with the demand is the right thing to do. To the extent possible, one objective is to create some empathy in the wrongdoer so she knows the reason she is receiving the letter. At a most basic level, the complainant may say, “We've got to do this; we are required to protect our rights.” But, often the protester also will want to empathize with the wrongdoer. For example, sometimes it may tell an in-house counsel or head of business essentially “I'm sure that if you knew what was going on, it would have never have happened, and now that you know, I'm sure that you will fix the problem.” Another example of empathy is advising the person violating rights that if she knew the consequences of her action ' the rights being violated and the harm that was being caused ' she would do the right thing and put an end to her infringing behavior.

Reward

It is almost always good to point out the benefits that a resolution will cause. This can be blunt ' “This is your last chance to avoid a lawsuit in federal court and the attendant costs and damages.” Or, it can be more nuanced where a graceful exit from a dispute is offered. Sometimes, albeit rarely, an offer can be made to pay the recipient to end its activities. For example, an alternate resolution could be offered to buy an existing inventory if the sales of the infringing product are stopped within a short period of time.

In suggesting the resolution, as all elements of the cease-and-desist letter, it is imperative that recipient and its likely reaction is considered carefully. Are they sophisticated? Do they have a history of aggressive, reasonable, or rationale behavior? Is their likely counsel aggressive, reasonable or irrational? At the least, the protestor should gauge its own likely reaction to the letter and draft it in a manner that would most effectively achieve its goals.

Business Tone

Cease-and-desist letters, as indeed all disputes, are emotional. They are about right and wrong, leverage and control, money and behavior ' all very emotional factors. Some cease-and-desist letters are too aggressive and heavy-handed, and trigger an expensive fight where a lighter, more reasoned touch would have generated the best business result. Instead of having an easily resolvable issue over a minor matter, the wrong protest letter can create a sticky situation from which it is difficult to extricate and that makes the client spend lots of money to resolve and, perhaps even worse, makes the client look foolish.

Accordingly, tone is important. The cease-and-desist letter should be serious, business-like and straightforward. It should be in plain language and avoid legalisms, which don't impress anyone. The letter should be honest and credible. If you exaggerate or make errors, it will harm credibility and the seriousness of the claim. For example, not every infringer is a willful predator. Making rash claims of intentional deception and misappropriation of goodwill against people who know that they were not trying to trick anyone does not intimidate. It only annoys and calls into question all the claims made, including the strength of the claim of infringement.

The structure and flow of the letter should be carefully considered for its ability to persuade. Use specific information about the recipient when available. She has to believe that she is the unique target of the protest. The letter should build an argument so that it appears that clear rights have been violated and the solution presented is reasonable and attractive, at least compared to the alternative.

Often, a phone call might be the most effective form of protest and avenue for resolution. This might be from in-house counsel to another in-house counsel where there is a personal relationship or the companies know each other. Also, where the companies in a dispute have a relationship, such as with a supplier, retailer or distributor, a call or meeting by a business person with a contact in the other party's organization often can lead to a quick and amicable resolution of the problem.

A cease-and-desist letter might not be appropriate even if there is a violation of trademark or other identity rights. The best course might be just to sue. This is often the case where the damage is severe or imminent and a preliminary injunction or a temporary restraining order is necessary. Also, sometimes where the infringement is willful or large damages are sought, there simply is no point in sending a letter and engaging in preliminary dialog. Further, a protest letter could be counterproductive in cases that are brought against a particular defendant to establish rights or to send a message or to address industry wide or reoccurring issues, or otherwise where the plaintiff desires a particular forum or time for a lawsuit that might be upset by a declaratory judgment action.

Sometimes, it is just better to let the violation or the possible violation go. This happens most often where there may be significant first amendment or fair use defenses and the objectionable use is so obscure that it has little impact on marketplace. Other examples are where the possible defendant is very sympathetic or otherwise where a protest may elicit negative publicity or ridicule.

Conclusion

The cease-and-desist letter is a worthy object of thought and imagination and requires thought and imagination to be done well. Its virtues are rarely celebrated and are largely hidden. Even so, effective cease-and-desist letters perform a great service to the client and to the community at large.

William G. Pecau, a member of the Board of Editors of this newsletter, is a partner in the Washington, DC, office of Steptoe & Johnson LLP, where he is a member of the Intellectual Property group. He can be reached at [email protected].