A cease and desist letter is a notice sent to an individual or a business to stop an action like copying of trademarks. Essentially, cease and desist notices are sent to warn about unlawful or unwanted acts prior to initiating the corresponding legal proceedings.
Brand owners with trademark registrations need to keep a watch on activity of competitors to ensure that their brands or trademarks are not misused. The misuse or copying of trademarks by third parties can be intentional or unintentional. In some situations, the misuse can result in infringement of copyrights as well. It is advisable to send cease and desist letters immediately when one becomes aware of such situations.
If you receive a cease and desist letter, it is strongly advisable to send across a strong response in a timely manner. In the response, each and every point stated in the letter shall be responded to with utmost clarity. In addition, further affirmations (submissions, denials, comments) should be made as well. This will be helpful during subsequent legal proceedings if the need arises.
It is well known that cease and desist letters fall under the category of warning. However, it is extremely important to ensure that the contents of cease and desist letters cover all the important points because of the basic rule of pleadings. It means that the concerns raised at the stage of cease and desist letter should be broad enough to cover the future claims by way of legal proceedings if required. This would prevent the other party from taking defense that the claims raised in legal proceedings were not part of original cease and desist letter.
It is really important to send a timely response to a cease and desist letter. The best way is to get in touch with a trademark attorney to develop the best possible strategy for preparing a detailed response. Based on specific facts of the case, various grounds can be used to counter allegations that seem to be baseless. As an example, but not limited to, such grounds include, different target markets, dissimilarity between the brands, different consumer behavior (impulse buy vs sophisticated thoughtful purchase), different target jurisdictions, and the like.
To prevent illegal use of brand names and trademarks, brand owners follow a proactive brand protection strategy. This requires appropriate protection by way of trademarks, copyrights and designs. The development and execution of strong brand protection strategy is helpful in preventing infringement of trademarks. In use, brand protection by way of trademark filing ensures legal protection under the trademark law, which defines the trademark as a word, tagline, logo or other symbol, used to identify a product or a business. Therefore, the trademarks are advantageous in differentiating a product and its manufacturer from another.
As a general classification, the various types of trademarks include service marks, word marks, trade dress, collective marks, and certification marks. By definition, service marks are used to promote one or more services, whereas trade dress covers promotion of product packaging. In addition, a collective mark is used to identify a group, organization or association, and the products, services or members of the group, whereas a certification mark is used to guarantee the quality of a specific service or product.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).
Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.