If you’re in business for any amount of time it is likely that you will receive a cease and desist letter at some point throughout your journey. If you recall this article you’ll know that monitoring your intellectual property (trademarks/copyrights) is part of owning it. So, it isn’t surprising that you might get a cease and desist at some point in relation to the knowing or unknowing use of someone else’s IP. Cease and desists are sent when one company thinks what you are doing might harm theirs and they want you to stop. Sometimes they are serious, and a real threat, other times they are simply a larger company trying to scare you out of using something you are well within your rights to use. For this article, I wanted to touch on a few of the things I think you should do if and when you get a cease and desist.
Let’s jump in.
Number 1. Take a deep breath!
I say this because this letter that I am sure was very well written by some attorney is scary as it’s meant to be. There is probably a lot of language in it you don’t understand, and now you’re thinking you’re being sued, and are about to lose your business. Just hold on. That is not how it works.
This letter isn’t much of anything, you are not going to jail and you are not being sued. I mean it’s not nothing…of course…but you do have options.
Take some time to calm down, do a little research and we can get to the response in a bit. Don’t ignore it, but you don’t need to respond to the email/message immediately.
Number 2 Don’t take to Social Media.
Keep this one to yourself. I know your friends, followers, acquaintances are used to hearing about your everyday life business included, but this is something that needs to stay between you and your attorney (you will probably want to call one of those, I’ll get there). If you post to social media about this, it can be used against you in court. So don’t write about how mad you are, don’t post a picture of the letter, don’t find the company that sent it and blast them on Yelp.
You might eventually go public with this information. But if and when you do that it will be after logical consideration and many conversations with your business advisors, legal counsel, and other business partners.
Number 3 Don’t Delete Anything.
You need to save all of the communications you’ve had with the other party. This means any email, comment, message, letter. Keep it all. You will need this in order to make an appropriate decision, and for use in court if things go that direction.
Also, don’t ignore the cease and desist. Don’t “delete” it and expect the company to go away. If you take no action, the company will take bigger action next time.
Number 4 Call an Attorney.
If you don’t have an attorney that you work within your business, getting a cease and desist is the perfect time to find one. Find an intellectual property attorney that works with online businesses because they are more likely to understand this arena.
The attorney will be able to review your potential infringement, the letter, and put together a strategy for handling the issue. If you can’t afford an attorney do your own research. You want to know the legalities so you can make a better decision on what to do. Research intellectual property and infringement, find out if this other company has been properly monitoring and using their IP, see if they have a history of sending this out and taking no action. The USPTO and Copyright websites are great places to start.
Number 5 Talk to your Business Buds
If you have business advisors, consultants or coaches you work with talk to them about your options. If this letter is demanding you stop calling your business by its name what are the implications of that? Maybe it’s something simple like a product that you’ve only launched a small test batch that bears an infringing mark and it won’t cost too much to just change the name.
Whatever the case may be, this is as much a business decision as it is a legal one. If rolling over and doing everything the letter demands would result in you going out of business, that isn’t going to be the choice you want to make.
Consider the reputation, financial, and long-term cost of you changing or doing whatever the letter is asking you to do. Although the best legal option and the best business option may not align, it could be best for you so don’t be afraid to take action that feels right for you and the future of your business.
Side note: anything you discuss with your attorney is confidential, anything discussed with your business advisors etc. is not. So be careful what you discuss. Try not to reveal what your attorney told you to anyone else if you want that to remain privileged.
Last thing to do!
Finally, you are going to have to make a decision.
There are actually a lot of options outside of doing what they’re demanding or going to court.
You can reply to the other side yourself and seek a negotiation. Maybe you can afford to pay for a license from them to use their IP and maybe they’re ok with that.
Your attorney can answer the letter. This shows you are serious, and not taking this lightly. And, that you likely know where you stand legally.
You can attack back. This is going to be very dependent on their own intellectual property position and behavior. But, if you see a weakness there you can send your own cease and desist, or file a lawsuit against them. Maybe you think they have engaged in questionable business behavior (this happens) and you’re ready to get the authorities involved. This will definitely get expensive, and escalate the situation, but if it is important to you it can be worth it.
You may want to take it public. If this is a sheer case of bully big business trying to get the little guy to go away, taking it public could be the thing that gets them to go away. Post to social media and explain your position. (of course, only do this after talking with your attorney!)
And last but not least, you could just decide to comply with the requests of the letter and move on. If what you were using really isn’t that important to you, and it won’t hurt your business to comply, then not fighting can be the best option.
When it is all said and done you are going to want to evaluate how you handled the letter, and why you got it in the first place. Often these letters are sent because the right research wasn’t done before you launched the business or product or began using that new tagline. Putting systems in place to do the right research can help avoid a cease and desist in the future.
These are not always avoidable, and the bigger your business grows the more likely it is that people will come after you, but hopefully, as these come in you will have systems and a good team in place to help you deal with them.
If you need help handling a cease and desist you can always email me at Shannon@montgomerypllc.com. I hope you found this helpful!
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.