Founder
If your business sells products, especially through online retailers such as Amazon and eBay, it’s important that you understand your legal obligations and how to handle complaints that could implicate liability on your part. One complaint that many businesses receive is the trademark cease and desist letter. The holders of trademarks send these communications to retailers and other businesses that have been accused of infringing upon their intellectual property rights.
You should take a cease and desist letter seriously, as it could be the first step in a potentially devastating legal claim made against you. With the help of experienced counsel, you can respond appropriately to these letters. The Keleher Appellate Law Group offers practical advice for what businesses in Chicago and elsewhere should do.
What is a Trademark Cease and Desist Letter?
A cease and desist letter (or email) is correspondence that alleges or suggests that the recipient is infringing upon the rights of the party that holds a trademark. Moreover, the letter will typically demand that the recipient cease any further activity that could infringe upon its trademark. In the context of online retailers and other businesses, a cease and desist letter usually contends that the party is selling counterfeit products or otherwise misappropriating the trademark.
Some letters demand payment of money to compensate the trademark holder for alleged financial losses resulting from the infringement, while others may open the door to another potential resolution such as a licensing agreement. Although the letters themselves are not enforceable since they are not court orders, trademark holders often send them as a precursor to further legal action, such as a cease and desist court order, injunction, and monetary damages.
How Should You Respond to a Cease and Desist Letter?
Although they are not court orders, cease and desist letters are serious. An online merchant, retailer, or other business ignores these communications at their legal and financial peril. Our Chicago, IL intellectual property law firm suggests the following steps:
- Stay calm: You may be shocked or even offended to receive such a letter, but a calm response is critical. You need to determine whether the letter is legitimate, whether the party represented in the letter actually holds the trademark, and whether you are the intended recipient. A patient, measured, and researched response is advisable over an immediate one, so stay calm.
- Review the details in the letter: A well-drafted cease and desist letter should be sufficiently detailed to inform the alleged infringing party of what they are doing to violate the trademark holder’s rights. Closely review the details so you understand what the holder is claiming.
- Retain an Illinois trademark litigation attorney: As early as possible, you should speak with a law firm that has experience defending clients against alleged trademark infringements. Our firm is ready to assist you each step of the way.
- Evaluate your products and practices: Next, take a close look at the products you are selling and your businesses practices to determine if the allegations are true. An attorney can assist by providing an objective review of your business to determine if it is infringing.
- Request more information: You may not understand the claim that the trademark holder is making against you, or the letter could be insufficiently detailed to allow you to properly respond. Either way, asking for more information is a good-faith move that signals your respect for the trademark holder’s rights.
- Consider a negotiation strategy: If your business is at least arguably infringing upon the trademark holder’s rights, you may wish to negotiate a resolution such as a licensing deal or paying the holder for its losses. An attorney can and should assist you in negotiating and executing a compromise to the situation.
- Determine potential legal consequences: Does your business have any legal defenses it could raise? Is it possible to dispute the factual allegations made against you? If you believe you have done nothing wrong, this step will be critical.
- Consider filing your own lawsuit: Some recipients of cease and desist letters choose to file a lawsuit to obtain a declaratory judgment which states that their mark does not infringe upon a trademark. This is one potential resolution you need to discuss with your lawyer.
Explore Your Legal Options Today
Receiving a trademark cease and desist letter is not the final word in the matter, and you do have options for how to handle it. The Chicago, IL law firm of The Keleher Appellate Law Group is ready to help you explore them. Connect with us now to get started.
The Keleher Appellate Group, LLC, serves clients in Chicago, Denver, St. Louis, Indianapolis, and the surrounding areas in Illinois, Indiana, Missouri, Wisconsin, and Colorado. We also provide our services nationwide and internationally.