To protect your patent or trademark from infringement, sending a cease and desist letter is a crucial step. Not only will it help you prevent further financial losses, but it will also discourage others from copying your product and gradually diminishing your market share. However, it’s important to take various factors into account when determining the timing and tone of the letter.
How to Determine if Your Patent or Trademark is Being Infringed?
To assess whether infringement has occurred, it’s essential to evaluate your patent and trademark rights. Hiring a patent attorney will provide you with insights into the strength of your case.
You should avoid finding an attorney who will simply tell you what you want to hear. Instead, seek someone who can give you an honest evaluation of your situation. It’s crucial to avoid getting involved in litigation only to discover later on that your case is weak. This not only wastes your money but also tarnishes your reputation as a patent or trademark troll.
For patents, carefully analyze your patent claims to determine their true strength. Many patent owners mistakenly believe their patents are broader than they actually are. Educating yourself on how to analyze your patent claims through informative articles can be immensely helpful.
In the case of trademarks, compare the similarity of the marks and the goods in question. The closer the resemblance between the marks and the goods, the greater the likelihood of confusion or trademark infringement. Other factors, such as the DuPont factors, also come into play. For instance, if actual confusion exists, it serves as compelling proof of potential confusion among the public.
However, it’s crucial to remember that even after your initial analysis, consulting a patent or trademark attorney is highly advisable. Infringement analysis involves a complex process that necessitates a careful balance of several factors. Seemingly small details may significantly impact the final determination of infringement.
What Other Factors Should You Consider When Sending a Cease and Desist Letter?
When deciding to send a cease and desist letter, it’s essential to consider the following factors:
- What is the ultimate goal you seek to achieve through this letter?
- What is the probability of success in stopping the infringer?
- How much will it cost to send the cease and desist letter?
- Are there any potential liabilities associated with sending the letter?
What is Your End Goal in Sending the Cease and Desist Letter?
Before proceeding to send a cease and desist letter, it’s crucial to determine your desired outcome. Are you looking for the infringer to pay damages? Do you simply want them to stop infringing? Would you like them to issue a public apology? Or are you willing to offer them a license? Clearly defining your end goal will influence the tone and content of the letter.
However, it is important to prepare for the possibility that your goals may not be achieved. Would you be willing to pursue litigation to defend your patent and trademark rights if necessary?
What is the Probability of Success in Stopping the Infringer?
Remember that a cease and desist letter is merely a formal communication and not a court order. The recipient can choose to ignore your letter, rendering it ineffective in achieving your desired outcome. This underscores the importance of seeking proper intellectual property counsel who can provide an honest assessment of your situation. They will inform you if your case is weak and advise against sending the letter, preventing you from wasting valuable time and money.
An overly optimistic assessment of infringement could lead to spending thousands or even hundreds of thousands of dollars on litigation. Conversely, undervaluing the infringement risks could result in prematurely giving up the opportunity to stop an infringer.
What is the Total Cost of Sending a Cease and Desist Letter?
The cease and desist letter itself is relatively inexpensive. However, conducting due diligence and infringement analysis at the outset can be costly. Additionally, the ongoing back-and-forth communication with opposing counsel and clients can consume a significant amount of both time and money. Therefore, even the initial interactions with opposing counsel could easily amount to several thousand dollars.
What Liability Do You Have When Sending a Cease and Desist Letter?
It’s crucial to be aware of the risks associated with sending a cease and desist letter.
For instance, if you threaten the infringer with a lawsuit, they may file a declaratory judgment (DJ) action against you. This legal action asks the court to resolve the dispute between you and the infringer. Although you may have only intended to send a cease and desist letter without engaging in litigation, the recipient can choose to initiate legal proceedings, thereby dragging you into a lawsuit.
Additionally, sending a cease and desist letter to companies that the infringer conducts business with may lead to accusations of tortious interference with a business contract. This perception arises from the potential interference with the contractual relationship between the infringer and other parties.
Remember, it’s essential to weigh these risks carefully and seek professional advice before proceeding with sending a cease and desist letter.
For more information about trademarks and patents, visit Garrity Traina.