Writing a cease and desist letter is one of the most common things I get asked to do as lawyer. For most people, they think that by sending out a cease and desist letter to every single person or business that threatens your business will automatically solve all your problems.
Wrong…
Used appropriately, a cease and desist letter can be a great tool to help protect your intellectual property from would be thieves. But used incorrectly and it just makes you and your business look like an idiot. And we don't want that, do we?
5 Common Cease and Desist Letter Mistakes
So that's why I've put together this list of 5 common mistakes I see people make when writing a cease and desist letter.
1. Not hiring a lawyer to write it
The whole point of a cease and desist letter is to ask someone to stop doing something. In the case of your business, the end goal is to ask someone to stop doing something that is unlawful or that otherwise hurts your business (i.e. cease), and to never do that thing again (i.e. desist) . This could be anything from stealing your intellectual property (i.e. your proprietary images, your trademarks and/or logos, or ripping off your course), to making disparaging comments about you online (i.e. “trolls”).
However, to sound legitimate, a cease and desist letter should come from someone who actually has the power to shut down the offending party, and in most cases that is an attorney. A cease and desist letter from one business to another isn't worth the paper its written on.
Everyone knows that with a quick google search, you can find any number of template Cease and Desist letter's online. And pretty much anyone can fill in those blanks and make something look threatening. However, if your cease and desist letter is coming from you and not your lawyer, then you look like an amateur.
If your business isn't important enough to you to hire an attorney to draft a legitimate cease and desist letter on law firm letterhead, then how can you possibly expect the offending part to take you seriously either?
2. Sending them out when you don't have anything to protect
If you are serious about protecting your intellectual property, you need to start taking affirmative steps to register your intellectual property with the federal government. This means ponying up some cash and filing trademark, copyright and (in certain situations), patent applications.
While it is true that you own the “common law” rights to your proposed trademark and trade dress even before you have registered your trademarks, until you have a certificate from the Federal Government that says that you own your trademark, it is much more difficult to protect your intellectual property in court.
3. Sending cease and desist letters out to anyone and everyone
Believe it or not, I get a lot of people who ask me to send these letters out to just about anyone that could conceivably be violating my client's intellectual property. And in most situations, the same people who are asking me to send out lots and lots of cease and desist letters are the same people who have yet to file their trademark applications.
We live in an increasingly smaller world. Each and every time you send out a cease and desist letter, (especially if you haven't filed your own trademark or copyright application first) you run the risk that this letter gets pasted online somewhere, or worse – that someone finds out you are actually infringing on their intellectual property and you didn't even know it.
In my opinion, the best strategy is to lay low until you have received registrations for your intellectual property and then send out letters to people who are clearly violating your intellectual property rights.
4. Making empty threats
You can only drink from the well so many times before it runs dry. The same is true with a cease and desist letter. Let's say that you send one out and give someone an ultimatum to stop violating your intellectual property within 30 days “or else”. 30 days come and go and they are still violating your IP. Now what?
Are you going to drag them into Federal Court and sue them? You better be prepared to do that. Because if you don't, you will quickly become known for not being able to follow-through on your threats. And before you know it, everyone will be taking advantage of you as a result.
5. Not having a clear reason for sending a Cease and Desist Letter
It is highly unlikely that a cease and desist letter, with nothing more, is going to shut down a competitor that may (or may not) be stealing your intellectual property.
Is there a time and a place for a cease and desist letter? Absolutely there is. But 9 times out of 10, it is not the best course of action. Many infringers are small time and will go away on their own after a weeks or months, without you having to do anything at all. In most cases, your money and time are better spent building your business and promoting your products.
Before I will even consider sending out a cease and desist letter for a client, I want to make sure that they have taken the following steps first:
- Taken proactive steps to register their intellectual property with the USPTO
- Completed a comprehensive name search to make sure that they and not violating someone else's intellectual property
- Researched the potential violator to insure that they do not have a history of getting involved in lawsuits
- Had a long and serious talk (with an attorney) about what will happen if the alleged infringer does not respond to the cease and desist letter
- Done a complete review of the competitor to insure that they are in fact violating my client's intellectual property rights
So you see, the decision to send out a cease and desist letter is a much more complicated decision than most people would think.
Think twice before you write and mail that letter, there may be better options for you.
Cease and desist letters. I need help with one in a situation that may not be worth it, but as I write this I remain fired up. I had someone steal a design I have for a hat.