If a business is not expecting a trademark cease and desist letter, its arrival can cause a lot of anxiety and angst for the business owner, director, or product marketing manager. It may be tempting to view such a letter as the opening of a black hole that will suck all the profits and capital out of your business or to think that it could spell the end of your marketing efforts, of your product line, or even of your business. In such a state of anxiety, it can become easy to take actions that could hurt your ability to defend yourself against the claims in the letter or could convert a potentially challenging but contained situation into a serious and more costly one. Those early moments after receiving a trademark demand letter need not create anxiety. We have provided five first steps to take if you receive a trademark cease and desist letter, also known as a trademark demand letter. These five steps can reduce your anxiety and set you on a health path to defending whatever claims are presented in the letter.

2. STEP 1
DON’T PANIC

3. Most letters are
resolved without
legal action
Only 2% - 5% of
legal cases filed ever
go to trial

4. What you say can be
used against you in
a legal proceeding
The sender has
likely thought about
the case before
sending the letter;
you should too

5. STEP 2

6. Standard commercial
general liability
insurance may not
cover many cases
involving intellectual
property rights, but it
is worth reviewing
Review specialty
insurance policies

7. STEP 3
(The sender likely did.)

8. Is it primarily asking for
more information?
(A soft demand letter)
Is it demanding you cease
and desist “or else”?
(A hard demand letter)
Does it include detail and
appear thought out
or
does it appear to be
merely a form with little
thought?

9. STEP 4
Some investigative
techniques can harm
your case or violate
the rights of the
sender, but if you
must…

10. Avoid the sender’s website and social website
pages; traffic could be monitored
Limit your search to public and/or governmental
databases
 Databases of state corporations registries
 Public filings databases
Keep a record of the sites you visit and provide this
information to your attorney

11. STEP 5

12. By demonstrating to the sender
that you are taking his or her
claims seriously
By allowing counsel to intervene
so as to avoid unnecessary
distractions for your business
By investigating the sender and
his or her claims more thoroughly
without damaging your defense or
risking violation of any rights

13. You need not try to hire the most expensive
firm in hopes of striking terror in the heart of
the sender
 It may not have the effect you intend
 You may end up feeling forced to settle the case on terms less
than desirable because you cannot afford the legal fees
Focus on competency and experience
 Ask questions
 Request references or examples of prior cases
 Speak with other business owners

14. P.O. Box 1886
Durham, NC 27702
(919) 794-7301
http://trademarks.thomasl
egal.pro
By James A. Thomas