The Balancing Act Behind Cease and Desist Letters in Trademark Enforcement

By Eric C. Turnbull

Branding is always crucially important when positioning your business in the marketplace, and that, in turn, means your trademark rights and responsibilities should never be ignored. Your brand is the recognizable space you carve out for your business in the marketplace. It’s the place from which everyone identifies your goods or services as coming from your business, and you often have to take steps to not only secure your brand, but protect it from infringers as well. The “cease and desist” letter is often the first step forward in defending your brand, but how forceful or lenient a cease and desist letter should be has proven a balancing act that can risk both your business’ goodwill and the enforceability of your mark. Protecting your brand too aggressively can damage your goodwill, but at the same time, failing to enforce your brand forcefully enough can strip you of your trademark rights and lose you some of that real estate you carved out for your brand in the marketplace.

One of the general elements of trademark law is the duty to police your mark, which means that, in holding trademark rights, you have the duty to police for unauthorized uses of your mark, uses of similarly confusing marks, and uses of licensees. Policing your mark is not optional – if you fail to do so, you can be barred from future enforcement attempts against infringers you previously let get away with infringement, or even lose your trademark rights altogether. On the other hand, overly-aggressive and tone-deaf policing of your mark will give you the appearance of being cold and unreasonable, potentially damaging the goodwill of your business.

Somewhere in between the ends of these poles is where a cease and desist letter needs to be – a place where your trademark rights are efficiently and effectively policed without damaging the goodwill and public image of your business. The further you get away from the middle, the more you risk either confusing your customer base and losing your trademark rights or alienating your customer base with overly aggressive tactics – and there’s plenty of cautionary tales from each side.

In failing to do anything about potential infringement, you risk losing your trademark rights altogether, as evidenced by the case Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., in which the defendant, the first to use the name “Patsy’s” for its restaurant, was stripped of its trademark rights while the trial court also enforced the rights of the plaintiff, the second to use the name “Patsy’s” for its restaurant, against the defendant.

Similarly, if you are too lenient or casual with a potential infringer in a cease and desist letter, you risk undermining your own claim should you have to resort to litigation. It’s always important to keep in mind that, although a cease and desist letter is an attempt to resolve infringement without going to court, it is also “Exhibit A” in every case where you do go to court. For that reason, the stance you take in your cease and desist letter is important, as convincing a court to enforce your trademark rights will become more difficult if you don’t demonstrate that you are serious about your brand and are willing to take the necessary steps to protect it. One of the last things you want to do in a cease and desist letter is unintentionally give an infringing party permission to continue with their behavior.

On the other side of this, however, is going too far to protect your rights in cease and desist letters, such as using a threatening and over-the-top adversarial tone that makes you look like an unsympathetic bully. Threatening cease and desist letters can be (and often are) published online to shame a trademark owner’s conduct, causing public backlash and potentially irreparable damage to the business’ goodwill. Examples of overly-aggressive cease and desist letters are everywhere. Louis Vuitton, who has been widely criticized as a trademark bully, was ridiculed after sending an over-the-top cease and desist letter to the University of Pennsylvania Law School over promotional material for a symposium. Olive Garden was also mocked after sending a dry and tone-deaf cease and desist letter to a blogger who blogs about eating at Olive Gardens for referring to Olive Garden. In both cases, the companies were publicly condemned for their actions, the response letters from the alleged infringers were found to be incredibly amusing, and their public images suffered.

So what does a good cease and desist letter look like these days? There’s no template, as cease and desist letters must be crafted according to the unique circumstances of the dispute. However, businesses have recently turned heads in good ways for sending down-to-earth and creatively-crafted cease and desist letters that, if anything, added to their goodwill. Jack Daniel’s earned praise for sending a cease and desist letter that calmly explained its obligation to protect its branding and even offered to assist the infringer with re-branding so as to not cause consumer confusion. Netflix went a little more tongue-in-cheek with a cease and desist letter to a pop-up bar themed around its show Stranger Things, but nonetheless received a great deal of credit for the way it handled the situation and ended up generating more attention for the show’s upcoming season. And, of course, Bud Light recently put forth a ridiculous, but hilarious effort to use a cease and desist letter to promote its public image and goodwill by literally sending a “town crier” to read it to a brewery marketing a “Dilly Dilly” beer. Make no mistake, Bud Light did this with their goodwill in mind, and in this case probably more so than actual consideration for protecting its trademark.

It’s always important to remember that cease and desist letters are, for all intents and purposes, the official introduction of a dispute, and they can prompt a great deal of differing responses. A potential infringer may comply and stop infringing activity. They may also sue you in a declaratory action (asking the court to declare that they are not infringing, probably in a venue where you weren't planning on litigating), or worse depending on the language in your cease and desist letter. In pulling the trigger on a cease and desist letter, you must also be prepared to pull the trigger on litigation. You must also be prepared to announce your dispute to the world, and if it doesn’t make you look good, you can bet that the person on the receiving end of the letter will go directly to social media with it. As the party seeking to protect your brand, you should be using this stage to calmly and clearly demonstrate that you understand your duty to protect your brand, explain the facts and circumstances that lead you to believe infringement has occurred, and a request for the infringing activity to stop.

A calm and measured cease and desist letter – not one that threatens war and destruction or one that gives away your rights – places you in the best position to protect your brand and your goodwill. And recent history has proven that a dash of sarcasm and humor doesn’t hurt, provided it is appropriate for the situation. The level of forcefulness or friendliness you display in the letter depends on the circumstances, but straying too far in either direction has proven to cause problems. In the end, it is always important to keep the ultimate goal in mind when sending out a cease and desist letter. It’s not about revenge. It’s not about punishment. It’s not about being nice. It’s simply about protecting your brand and goodwill so you can get back to business as usual – the one goal you should never lose sight of.