Drafting a Trademark Cease and Desist Letter

By: Roberta Jacobs-Meadway and Roger LaLonde, ECKERT SEAMANS CHERIN & MELLOTT, LLC

BEFORE SENDING A TRADEMARK CEASE AND DESIST LETTER on behalf of a client, it is imperative to conduct due diligence and to carefully consider the content and tone of the letter. Such letters may range from a polite invitation to negotiate terms for coexistence, to a request for information as to how the alleged infringer is willing to address your client’s concerns, to a stern demand that the alleged infringer cease all use of a mark by a defined date. Assessing these issues is crucial to drafting an effective letter and may ultimately curb the need for litigation and lead to a favorable resolution for your client.

This article discusses pre-drafting due diligence and the key issues that your client should consider before sending a cease and desist letter. The article also offers guidance on effective letter drafting, including evaluating the letter’s objective, tone, and demands.

Pre-drafting Due Diligence

A cease and desist letter should be viewed as a prelude to litigation. Thus, before sending a cease and desist letter, it is imperative to conduct an adequate investigation to identify the nature and extent of the allegedly infringing use. You should have a thorough understanding of the strength and viability of your client’s potential claim and the business consequences of sending a cease and desist letter, so that the letter will not backfire against your client’s interests.

The extent of diligence that is adequate in a given case depends on a number of factors. As discussed more fully below, you should take the following steps as part of the pre-drafting due diligence process:

• Identify and research the alleged infringer(s)
• Confirm priority of use
• Assess strength of your client’s case, including (1) whether a likelihood of confusion exists between the alleged infringer’s mark and your client’s mark, (2) whether a pre-litigation survey should be commissioned, (3) the strength of any potential defenses, and (4) third-party issues/opportunities
• Assess risk of a declaratory judgment action
• Weigh business and legal ramifications
• Consider alternatives to a cease and desist letter

Include your client in the due diligence process, where appropriate, and discuss the results of the investigation and potential options and consequences with your client. If the client decides to send a cease and desist letter, you should next assess when the letter should be sent, based on any relevant timing considerations, and then draft the letter itself.

To read the full practice note in Lexis Practice Advisor, follow this link.

Roberta Jacobs-Meadway is a partner with Eckert Seamans Cherin & Mellott, LLC, Philadelphia, and serves as co-chair of the firm’s intellectual property practice group. Roger LaLonde is an associate in the firm’s intellectual property practice group.

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