Turn it Up or Dial it Down? Adopting the Right Tone in Your Trademark Cease and Desist Letter | Practical Law

Turn it Up or Dial it Down? Adopting the Right Tone in Your Trademark Cease and Desist Letter | Practical Law

A discussion of key considerations for adopting an appropriate tone in a trademark cease and desist letter, including how to determine what tone to use, options for modifying the tone and possible consequences of being overly aggressive.

Turn it Up or Dial it Down? Adopting the Right Tone in Your Trademark Cease and Desist Letter

by Practical Law Intellectual Property & Technology
Published on 04 Aug 2015 • USA (National/Federal)
A discussion of key considerations for adopting an appropriate tone in a trademark cease and desist letter, including how to determine what tone to use, options for modifying the tone and possible consequences of being overly aggressive.
A trademark cease and desist letter can be an effective tool to:
  • Stop suspected trademark infringement and dilution.
  • Preserve a trademark owner's rights.
  • Avoid costly litigation.
  • Set the stage, if litigation is unavoidable.
A thoroughly researched and well-crafted cease and desist letter can make the difference between a trademark owner quickly achieving its objectives and a protracted and expensive battle. For a model trademark cease and desist letter template, see Standard Document, Cease and Desist Letter: Trademark Infringement.
An often overlooked but vital aspect of a cease and desist letter is its tone. While a strongly worded letter can be appropriate in many cases, an overly aggressive letter:
  • Increases the risk that the alleged infringer will file an action seeking declaratory relief in response to the letter.
  • May lead to negative publicity and being labeled a trademark bully.
The key is to strike the right balance, which varies depending on the facts of the case and the strength of the trademark holder's claims. Specific factors to consider when deciding on the letter's tone include:
  • The nature of the alleged infringer's activities, for example, whether they involve serious infringement or minor misuse.
  • Whether the alleged infringer is acting with willful intent.
  • The strength of the alleged infringer's defenses and potential counterclaims.
  • The damages sustained by the trademark owner from the alleged infringer's activities.
  • The relief sought by the trademark owner.
  • The size and resources of the alleged infringer.
An aggressive tone may be appropriate in cases where an alleged infringer's activities are clearly willful and causing or about to cause significant harm to the trademark owner. However, in other cases a more restrained approach may be more likely to yield the desired results. For example, if the alleged infringer is a small company that is not acting with willful intent, a letter that is more educational than threatening may be advisable. In those situations, the trademark owner should consider:
  • A phone call to the opposing party. A phone call is less threatening than a letter and may allow the trademark owner to more fully explain its position and effectively address any objections or concerns raised by the other party.
  • A gentle letter signed by a company executive. A letter signed by a company executive is likely to be viewed as less threatening than a letter sent by an attorney and increases the likelihood that the letter will achieve the desired result. However, counsel should consult the applicable professional responsibility rules concerning ghostwritten client communications to opposing parties before preparing or sending a letter under the client's signature.
An overzealous trademark owner risks negative publicity and being labeled a trademark bully. For more information on trademark bullying and how to avoid being labeled a bully, see Article, Expert Q&A on Trademark Bullying. An overly aggressive letter may also increase the risk that the alleged infringer will file an action seeking declaratory relief in response to the letter. Therefore, when preparing a gentle letter, counsel should:
  • Consider making "requests" instead of "demands."
  • Provide reasonable deadlines for compliance.
  • Avoid accusatory language, for example, stating "you may not be aware" instead of "as you know" when referring to the alleged infringer's knowledge of the trademark owner's rights.
Counsel should also consider the letter's timing. In some cases, it may make sense for the trademark owner to file a complaint before sending the cease and desist letter to reduce the risk that the alleged infringer will successfully bring a declaratory judgment action in a forum of its choosing.
For detailed guidance on drafting and responding to trademark cease and desist letters, see: