I've ceased and desisted. Now what?
March 21, 2008 2:20 PM Subscribe
My aunt recently received a cease and desist because she's selling a product called (new adjective) (adjective) (noun) (e.g. "really cool thing) on her web site. The cease and desist is because (adjective) (noun) (e.g. "cool thing") is supposedly trademarked.
So no problem, it's just an honest mistake and she's changed the names of the product on her web site. The cease and desist then says she needs to provide written assurance that she's removed references to this combination of wording from her web site, flyers, packaging, etc. and that she won't do it again. No problem, as the web site is the only place that uses the particular word combination to describe the product.
She doesn't want to lawyer up because the amount of sales on this product is almost negligible, and she's not fighting it.
So the question is, is there any kind of wording to use, or to avoid, when writing up the response? She's leery of "admitting fault" because it's not like she did it on purpose and was unaware that the word combination was trademarked, and she's asking me for advice because her English isn't so good.
I was wondering if it would be appropriate/wise to simply rephrase the info from the cease and desist. e.g. if it says "assure that you've removed references from your web site" then respond with "I have removed references from my web site" etc.
I googled "how to respond to cease and desist" and checked mefi and found mostly info about what to do when you want to fight it, but couldn't find anything about a graceful way of "rolling over." Any advice?
So no problem, it's just an honest mistake and she's changed the names of the product on her web site. The cease and desist then says she needs to provide written assurance that she's removed references to this combination of wording from her web site, flyers, packaging, etc. and that she won't do it again. No problem, as the web site is the only place that uses the particular word combination to describe the product.
She doesn't want to lawyer up because the amount of sales on this product is almost negligible, and she's not fighting it.
So the question is, is there any kind of wording to use, or to avoid, when writing up the response? She's leery of "admitting fault" because it's not like she did it on purpose and was unaware that the word combination was trademarked, and she's asking me for advice because her English isn't so good.
I was wondering if it would be appropriate/wise to simply rephrase the info from the cease and desist. e.g. if it says "assure that you've removed references from your web site" then respond with "I have removed references from my web site" etc.
I googled "how to respond to cease and desist" and checked mefi and found mostly info about what to do when you want to fight it, but couldn't find anything about a graceful way of "rolling over." Any advice?
Have you done a trademark/copyright search to be sure you that you are infringing. You should ask them for documentation, including a copyright notice implying first use, to see if it pre-dates your claim. IANAL, btw.
posted by parmanparman at 4:04 PM on March 21, 2008
posted by parmanparman at 4:04 PM on March 21, 2008
What parmanparman said. Also, trademark protection is much mores specific than the letter apparently acknowledges. It's supposed to prevent one business from stealing another's customers by giving them the mis-impression that they're one and the same. Is this Bullying Company A's service blatantly unrelated to Lawyerless Aunt B's product? (see for instance paragraph 6 of this) If so, she may want to reconsider "rolling over" for no reason.
As far as the free legal advice, she needs an actual free legal service with volunteer lawyers who will read the letter and evaluate the risk. Some places to call around to: Small Business Administration, SCORE (associated with SBA), local legal aid clinic if she's poor, local law schools, senior center (some are don't even care what age you are), chamber of commerce, business development center of nearby colleges, etc. If anyone in the family is enrolled in college, check if their campus offers a free legal service to students.
After she deals with this problem, urge her to budget for consults with a lawyer and accountant. Getting her business setup wisely will prevent considerably more expensive problems later.
posted by nakedcodemonkey at 4:33 PM on March 21, 2008
As far as the free legal advice, she needs an actual free legal service with volunteer lawyers who will read the letter and evaluate the risk. Some places to call around to: Small Business Administration, SCORE (associated with SBA), local legal aid clinic if she's poor, local law schools, senior center (some are don't even care what age you are), chamber of commerce, business development center of nearby colleges, etc. If anyone in the family is enrolled in college, check if their campus offers a free legal service to students.
After she deals with this problem, urge her to budget for consults with a lawyer and accountant. Getting her business setup wisely will prevent considerably more expensive problems later.
posted by nakedcodemonkey at 4:33 PM on March 21, 2008
Quick note: Trademarks and copyrights are not the same thing, and you can't copyright a two-word phrase. So if you take parmanparman's advice, be sure it's trademark you're asking about, not copyright.
posted by L. Fitzgerald Sjoberg at 9:21 PM on March 21, 2008
posted by L. Fitzgerald Sjoberg at 9:21 PM on March 21, 2008
This is tricky, because even a "rolling over" letter signed only by you may not protect your rights. It's like you've gotten an eviction notice and the landlord accepted payment. They can still evict you! If you hope to avoid future legal action you need a settlement agreed to by both parties.
Given that the response, if any, has so little bearing on whether your aunt is protected, it almost doesn't matter what she says in one.
A C&D is also not proof of infringement, it's just sort of a shot across your bow saying that they might consider possibly eventually maybe suing. In the world of trademark protection, sending out C&Ds for every shadowy slight infringement counts as "actively protecting" the mark. So in essence, you also need to realize you are only in jeopardy to the extent that this other company thinks you are infringing. It isn't a legal judgement just because their lawyers had their secretaries type and mail a letter.
So view any response as merely a polite send-off with no legal weight whatsoever. "I trust our dealings are finished."
posted by dhartung at 11:49 PM on March 21, 2008
Given that the response, if any, has so little bearing on whether your aunt is protected, it almost doesn't matter what she says in one.
A C&D is also not proof of infringement, it's just sort of a shot across your bow saying that they might consider possibly eventually maybe suing. In the world of trademark protection, sending out C&Ds for every shadowy slight infringement counts as "actively protecting" the mark. So in essence, you also need to realize you are only in jeopardy to the extent that this other company thinks you are infringing. It isn't a legal judgement just because their lawyers had their secretaries type and mail a letter.
So view any response as merely a polite send-off with no legal weight whatsoever. "I trust our dealings are finished."
posted by dhartung at 11:49 PM on March 21, 2008
This thread is closed to new comments.
"I have complied with the requests you made in your letter dated xx-xx-xxxx."
And then leave it at that.
posted by spilon at 2:30 PM on March 21, 2008 [3 favorites]