Cease and Desist: What to Do (Besides Panic) Upon Receiving This Letter
When clients need to create marketing tools for their businesses, including trademarks, advertising, brochures, direct mail senders, websites, signage, and other highly visible digital and print communications, they often ignore and sometimes disdain the strict Laws that protect copyrights and trademarks against infringement. . However, if the owner of the record detects a trademark or rights violation, they can commission their attorney to draft a “cease and desist” letter that often causes immediate panic in the recipient with only days to respond.
Such letters serve to notify the alleged infringer that a lawsuit may be brought should the infringing activity continue and that “damages” may be determined based on the amount of income / profit that was generated as a result of such activity.
Since I’m at the center of all of this as the creator of the aforementioned marketing elements, my clients share those ads with me in the hope that I can somehow help them get out of trouble. Equally surprised by such news, as I never intentionally engage in any kind of infringement activity, I first inform my clients that I am not an attorney and therefore cannot legitimately inform them of their legal rights or the ramifications of such a letter. And, since working with my clients is largely a team effort, involving instructions, guidance, and ultimately approval from my clients before proceeding with printing or publishing any final marketing efforts for them, my surprise at receiving such a letter cannot be disguised. I share with them previous experiences and my suggestions on the best way to proceed.
On a recent occasion, my client decided, after much anguish and disbelief, that the best course of action would be to consult a trademark attorney for expert representation. While I have often written letters to clients to successfully support their legal position, I could not argue the virtues of this decision due to an undeniably important fact. Although my client and I are individual business owners, the client behind the cease and desist letter was a multinational corporate giant with deep pockets using a national law firm with offices in Manhattan.
This did not surprise me, as the work I do for my clients has a powerful marketing force, with very attractive graphics and equally compelling messages, which elevates them to the top of the Google rankings, resulting in stellar sales and incredible notoriety. It is no wonder that such a large corporation fears the threat of competition from my client, who are selling to the same market. What was puzzling about this situation was that my client’s marketing is extremely supportive of the corporation in question, as my client’s articles are intended to improve the products of this corporation. Without corporate products, there would be no market for my client to serve.
After more than a decade of working together, my client would be the first to admit that my marketing efforts are largely responsible for his rise to fame, which ironically includes sales to divisional units of this same corporation. Many of these corporate units have recognized the value of my clients’ products to adorn their brand as a way to improve their own sales, not dissuade them. But it appears that the members of the business elite at the helm of the Asian headquarters of this company are concerned that my client is trying to take the business away from them, clearly a misunderstanding on his part.
What was the nature of the cease and desist letter? The corporate lawyer detailed a series of alleged infractions:
1. Using a typeface style to identify your products that was not your logo, but was close enough to cause confusion in the marketplace.
2. Obviously not differentiate our products from yours, the difference is the secondary market vs. original equipment manufacturing, respectively.
3. Various stipulations regarding the size of the text used in the name of this corporation (too large!), The size of the text used in our disclaimer information (too small!), And the use of your corporate name in the photos of your own products in which our products can be used. (Do we detect envy here?)
4. Use of the corporate name on our products, an erroneous assumption made by the corporation based on the use of its name on its own products within some of our photos. Please note that the corporate attorney clarified that we do not infringe any rights by using your name or displaying your products to sell our products that are designed and manufactured to complement and personalize your products. This is quite legal. What they were protesting were our so-called “unfair business practices” that were possibly taking business away from them.
At the request of my client, I provided his attorney with a thorough investigation that I had conducted in support of my client that showed similar cases of the alleged offensive subpoenas; examples of disclaimer text size used on many other websites, including the corporation’s own website (which is much smaller than that used on my client’s website); and proof that none of our products display the corporation’s logo or any facsimile thereof. These examples were sent to the corporate attorney with a judgment or two from my client’s attorney.
Meanwhile, allowing the attorneys to speak to each other in their own language on their own hours had given us more time to implement the necessary changes. Since my client had given me free rein to address all complaints as determined necessary, I decided that compliance would be the best route to reduce any additional action that might involve more than a decade of my client’s annual revenue. Despite knowing that my client felt 100% justified in using the corporate name in the elegant way we have done to date and was upset that I had to make so many changes with no apparent gain, I decided that a marketing total the design could satisfy the corporation while elevating my client’s brand to a new level of excellence. In essence, why not capitalize on a seemingly dire situation and transform it into a positive opportunity for growth and profit?
Fortunately, my client had no problem emphasizing that their products are truly aftermarket (i.e. not OEM or Original Equipment Manufacturing) because OEM products are often perceived as too expensive and sometimes substandard. by comparison, and my client’s aftermarket products are. it is often sought as a better alternative to OEMs at a better price. Also, replacing the corporate name with my client’s company name was a giant step toward a stronger brand for my client’s business, something he had been shy about doing for most of his years in business for fear of Outshine the corporate name on the products so your articles are made of.
So, I began the arduous task of redesigning every page of your website, your printed materials and signage; rewrite the text to comply with corporate requests (verbatim!); remove your name from each photo of your products that shows the use of our products; and expanding our already very comprehensive disclaimers to include all the details of their verbiage, including statements that “we do not sell original equipment manufacturing” and that we are “in no way affiliated, licensed or connected with” the corporation in question. I made sure these changes were made to each of our 90+ web pages and many other marketing elements!
Upon completion of this work, our attorney informed us that our new filings had been approved with the corporate attorney and his clients, satisfying all alleged violations and terminating any further action at this time.
Since we had never mentioned the term OEM or Original Equipment Manufacturing before anywhere in our material, I informed my client that using such terms repeatedly on every page of our website would increase the likelihood that Google searches will now list our pages in response to those search terms, plus our excellent ranking for aftermarket searches, opening up a new market for insights and potential sales. It appears that the corporation’s complaints were helping my client at the same time as they were shooting themselves in the foot, so to speak!
With this knowledge, my client celebrated not only relief from legal rectitude, but triumph in defeat! You may have paid your trademark attorney handsomely to deliver my messages to the corporate attorney, and he paid me for all my work to correct his alleged crimes, in the end he benefited greatly from a better brand, legal strength, and prospects for higher profits. to come, not just from their global consumer market, but also from the now ingratiated corporation that probably feels the victory was theirs alone. Who would say that giving up and giving up could translate into win-win?