Today I want to talk to you about 5 common cease and desist letter mistakes that will make you look like an amateur.
Cease and desist letters are one of the most common things that I get asked to do as an attorney, so I want to share with you five common mistakes that I've found that people make with regard to cease and desist letter. So here we go.
Cease and Desist Letter Mistake #1 – Not Hiring a Lawyer
Let's start with number one. All right, so the first major mistake that I see people make with cease and desist letters is that they don't actually hire a lawyer to draft it for them. Now this makes no sense to me. If you want to take the time and effort to put together a cease and desist letter, doesn't it just make sense that you're going to actually hire a lawyer to do that for you. Because if it's coming from you, it's not going to have any meat on it. And if you actually want somebody to stop doing something that they're maybe doing illegally, or maybe they're violating your intellectual property rights, it makes sense to actually have a lawyer draft that letter. So that's the first mistake I see people make.
Cease and Desist Letter Mistake #2 – You Have Nothing to Protect
The second mistake I see people make is they send them out when they don't actually have anything to protect. Maybe you're brand new startup, maybe you're only in business for a couple months and you haven't filed anything. You haven't registered any of your intellectual property, but yet you're sending out a cease and desist letter to somebody who's probably in the same position that you are, maybe even a little bit further down the line than you are. You're asking them to stop violating your intellectual property perhaps, or doing something else. Chances are, even though you may have common law rights to some intellectual property, that because you haven't registered anything, you're facing a long legal battle anyway. So there's really no point to sending these things out until you actually have something to protect.
Cease and Desist Letter Mistake #3 – Sending it to Anyone
The third big mistake that I see people make is that they send these cease and desist letters out to anyone and everyone. Anyone who's a potential competitor of them that might be somehow infringing on their intellectual property, they're going to want to send a letter to, and that's just a mistake.
You need to understand that every single time you send out a cease and desist letter, you're putting your mark on the internet. You're running the risk that somebody is going to take that letter and post it online and say negative things about you or your company. Perhaps, maybe it's going to clue somebody in that actually owns the rights to your own proposed trademark that maybe you haven't even registered yet, that you're actually stealing their intellectual property. So you want to be very careful and I recommend not sending these things out to anyone and everyone, especially when you're a young startup.
Cease and Desist Letter Mistake #4 – Making Empty Threats
The fourth major mistake that I see people make is empty threats. And basically what this means is they're telling people to stop doing something or they're going to file a lawsuit within 30 days. Well, if you have no intention of filing a lawsuit, it really doesn't make sense to send a cease and desist let telling somebody that you're going to file a lawsuit against them. You're basically asking for a fight with a bully that you don't know anything about, and maybe they're weaker than you, maybe they're stronger than you. You don't really know. So when you go ahead and start sending these things out without really knowing what you're going to be able to do to back them up, that's kind of a big mistake and a red flag, in my opinion.
Cease and Desist Letter Mistake #5 – Not Having a Plan
The fifth major mistake that I see people make with cease and desist letters is that they don't really have a plan. They don't really know why they're sending them out. They think that by saying these things out, it's going to scare somebody to stop doing something. 9 times out of 10, that's not the case, and especially if it's coming from you and not a lawyer, they're just going to look at you as an amateur. So you're basically just harming your business reputation in the long run. So unless you have a legitimate reason for sending out a cease and desist letter, I recommend not doing that, at least in the startup phase of your business.
Steps to Take Before Sending a Cease and Desist Letter
Now, this is not to say that there's not a time and a place for a cease and desist letter. There certainly is. And in my opinion, here's the steps that I would take before I would send out a cease and desist letter for a client. The first thing I want to make sure that person is doing is registering all their intellectual property with the US Patent and Trademark Office.
That's number one. So filing their trademarks, filing their copyrights, filing their patents if they have patents. Making sure you're doing everything on the up and up online, because the last thing you want to do is send out some sort of cease and desist letter and have somebody use that as ammunition against you in a trademark infringement lawsuit. Along with that, you're going to make sure that you have conducted a comprehensive name search to make sure that you are not violating anybody else's intellectual property.
Now this doesn't mean you go out there and hire somebody on Fiverr for five bucks to do a name search for you on the US Patent and Trademark Office. That's not what I'm saying. What I'm saying is you need to hire a lawyer or an outside service to conduct a comprehensive name search. That means the US Patent and Trademark Offices, that means Google common law searches, perhaps international searches. You want to make sure that you're not violating anybody else's intellectual property before you send one of these out.
Next, you want to research the potential violator. You want to know who you're dealing with. Is this somebody that's been involved in a lot of lawsuits? Maybe they have deep pockets? Maybe they're a subsidiary of a bigger corporation that you need to be aware of. Are they somebody who just opened up their business and is brand new, and perhaps they're not even going to be around in a couple of years, so what's the point in suing them now, or even sending a cease and desist letter now. You want to know something about the potential infringer of your intellectual property.
Along with that, you want to do a complete and thorough review of what this competitor is doing to make sure they are actually violating your intellectual property, because if they're not, sending a cease and desist letter is just going to be a futile exercise for you. And then finally you want to have a long and serious talk with an attorney to make sure that this is the right course of action for you, because in some cases it is, in many cases it's not. So I recommend talking to an attorney and having a serious discussion about what it's going to mean to send out a cease and desist letter before you actually go ahead and do that.
So that's all I've got for today!