Reconsidering the Cease-and-Desist

In the world of despised legal correspondence, few things beat cease-and-desist letters. They promise maximum, but unspecified, efforts to protect “valuable intellectual property rights” and subtly suggest that failure to comply will result in costly legal proceedings, if not steep damages. Nevertheless, they are both important and useful in many contexts, including policing trademarks.

Before launching a cease-and-desist letter, consider whether the third party’s use is a “use in commerce,” or use in connection with sale or advertising of goods and services. If not, then there is no trademark infringement.

Free expression use such as news reporting and fair use are not likely to confuse, and there is no infringement without likelihood of confusion. Relevant considerations for confusion are the mark’s strength, similarity with the alleged infringing mark, and relatedness of the goods and services. Thus, consumers are likely not confused by the use of REDLINE on both cosmetics and energy drinks.

Analyzing these factors can provide a high degree of confidence that there is no infringement. But when there is, bridle the itchy trigger finger and reserve cease-and-desist letters for more serious cases. While not having quite the same level of negative connotation as “patent troll,” being labeled a “trademark bully” can still sting.

In cases where a cease-and-desist letter is necessary, smart trademark policing calls for being polite, reasonable, and avoiding an overly adversarial tone. That fosters cooperation, probably yields better results, and could yield some positive publicity.