As the name implies, a standard cease-and-desist letter usually includes a demand that the recipient "cease and desist" its infringing activities. Typically, a cease-and-desist letter sets forth the trademark owner's rights to a particular trademark and identifies the recipient's conduct that infringes those rights. Such letters generally set forth legal claims, such as trademark infringement, unfair competition, cybersquatting and/or dilution under state and/or federal law. At the end, the letter sets forth the "ask" (or, in the case of many cease-and-desist letters, the "demand"). Today, perhaps more often than not, the standard cease-and-desist letter does not even contain the words "cease" or "desist." Rather, trademark owners are mindful that use of the phrase "cease and desist" in a letter setting forth a claim for trademark infringement and the corresponding demand that the recipient cease use of a particular trademark have the potential to create declaratory judgment jurisdiction. Moreover, in an age where "cease and desist" letters have the potential to go viral, end up as the subject of a news story, or be attached to a declaratory judgment complaint, trademark owners must draft cease-and-desist letters not only with the alleged infringer in mind. The court and the public at large should also be considered when determining both the tone and content of a cease-and-desist letter. A cease-and-desist letter has the potential to reach a much wider audience than just the alleged infringer.
Thus, should the "cease-and-desist" letter be renamed the "please-and-thank-you" letter? Below are a few lessons learned both from court decisions and news articles involving cease-and-desist letters.
Lesson 1: Think Before You Send
A cease-and-desist letter can often be a relatively low-cost means of addressing trademark infringement problems. It can also become an exhibit to a trademark infringement complaint or to your target's declaratory judgment complaint, depending on the wording used in the letter. In either case, before the drafting begins, you should investigate the proposed recipient and plan your strategy. Too often, trademark owners send the letter and think about the next steps later. Careful consideration of your strategy and identification of your ultimate goals are crucial first steps to be taken even before the letter is drafted. What will you do if the infringer ignores your letter? What are the next steps, and are you prepared to pursue them? It is also important to evaluate the other side's position. How is the mark being used by the alleged infringer? Is there a fair use, parody, free speech or other defense? In addition, an investigation (either formal or informal) should be conducted into use of the mark both by the trademark owner and the alleged infringer. Does the trademark owner have superior rights? Is there a priority issue? Might there be a natural zone of expansion claim? Is there evidence of third party use of the mark? Are there statements made during prosecution of the trademark that help or hurt the trademark owner's position? When a cease-and-desist letter is sent without prior thought being given to these considerations, the trademark owner may find itself in an undesirable position.
Lesson 2: Listen to the Supreme Court
One reason why cease-and-desist letters often no longer include the phrase "cease and desist" is due to the potential that the recipient of the letter could initiate a legal action against the trademark owner, seeking a declaration of non-infringement of the cited trademark. In such instances, the alleged infringer has the ability to pick the judicial forum of its choosing (rather than being dragged into court in a less convenient or friendly forum of the trademark owner's choosing) and is the plaintiff (as opposed to the defendant) in the action.
In 2007, the U.S. Supreme Court ruled in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007),that declaratory judgment jurisdiction may exist where, "under all circumstances, . . . there is a substantial controversy between parties having adverse legal interests of sufficient immediacy and reality to warrant the issuance of a declaratory judgment."This ruling loosened the standard governing the requirement under Article III of the U.S. Constitution and the Declaratory Judgment Act that courts acting under their authority find an "actual controversy" before jurisdiction exists. Under the MedImmune rule, "[p]arties that have their legal interests threatened in an actual controversy have standing to sue under the Declaratory Judgment Act. On the other hand, declaratory judgments cannot be used to seek advisory opinions on hypothetical factual scenarios." Id. at 127
Following the MedImmune decision, in examining whether an "actual controversy" exists for trademark infringement, courts have increasingly found actionable controversies on the theory that, "[W]here a trademark holder asserts rights . . . based on certain identified ongoing or planned activity of another party, and where that party contends it has the right to engage in the accused activity without a license, an Article III case or controversy will arise and the party need not risk a suit for infringement by engaging in the identified activity before seeking a declaration of its legal rights." EnviroGLAS Prods., Inc. v. EnviroGLAS Prods., LLC, 705 F. Supp. 2d 560, 567 (N.D. Tex. 2010). Declaratory judgment jurisdiction has been found, for example, where a trademark owner (or its counsel) has sent correspondence to an alleged infringer that: (1) asserts the trademark owner's intent to file suit by a date certain, Ceramic Performance Worldwide, LLC v. Motor Works, LLC, 93 U.S.P.Q.2d 1771 (N.D. Tex. 2010); (2) sets a deadline for the alleged infringer to respond to the correspondence, Sinclair v. StudioCanal, S.A., 709 F. Supp. 2d 496 (E.D. La. 2010); (3) requests or demands that the recipient "cease and desist" from certain activities, id., see also Icon Health & Fitness, Inc. v. Relax-a-Cizor Prods., Inc., 2012 WL 1604376 (D. Utah May 7, 2012); (4) requests that the recipient implement a litigation hold, Cosa Instrument Corp. v. Hobre Instruments BV, 698 F. Supp. 2d 345 (E.D.N.Y. 2010); and/or (5) claims that the alleged infringer's conduct constitutes a violation of the Lanham Act, see Blue Athletic, Inc. v. Nordstrom, Inc., 2010 WL 2836303 (D.N.H. Jul. 19, 2010); BCI Burke, LLC v. Playworld Sys., Inc., 2012 WL 2395190 (E.D. Wis. Jun. 25, 2012). Given these decisions, trademark owners and their counsel have reason to pause before pulling the trigger on a strongly worded cease-and-desist letter.
Lesson 3: Be Mindful of the Social-Media Audience
In addition to the possibility of triggering a declaratory judgment action, trademark owners and their counsel should also consider the potential that a firmly worded cease-and-desist letter, or information about the content of such a letter, may suddenly appear on social-media sites or elsewhere on the Internet. This should come as no surprise. People today use social media to express all sorts of opinions about a plethora of topics. A recent study, for example, found that one in 10 smartphone owners have written a review on a website or social-media platform while in the store where they are buying the product. It is reasonable then to expect that someone who receives a strongly worded cease-and-desist letter may express an opinion about that letter on either his or her own Facebook page or on the Facebook page of the trademark owner who sent the letter.
If not on social media, then the recipient of a cease-and-desist letter may upload a copy of the letter elsewhere on the Internet. ChillingEffects.org, a joint project of the Electronic Frontier Foundation and the clinics of Harvard, Stanford, Berkeley, University of San Francisco, University of Maine, George Washington School of Law, and Santa Clara University School of Law, has a database and repository where recipients (and senders) of "C&D notices" for trademark or domain name disputes, or in connection with protest, parody or criticism sites (among others), can upload copies of cease-and-desist or other letters that they have received (or sent). ChillingEffects.org received more than 12,000 cease-and-desist notices in 2010 alone. See http://chillingeffects.org/weather.cgi?WeatherID=643.Google and Twitter, for example, routinely submit cease-and-desist letters that they receive to ChillingEffects.org's database. See http://arstechnica.com/tech-policy/2012/01/twitter-uncloaks-a-years-worth-of-dmca-takedown-notices-4410-in-all/.
As a result of the recipients of cease-and-desist letters either posting the letters online or complaining about the trademark owner who sent the letter on social media, the press has taken an increasing interest in stories involving the pre-suit assertion of trademark-infringement claims. As discussed below, trademark owners have been painted as bullies or saints depending on the content of their cease-and-desist letter.
Lesson 4: Learn From Others
In today's social-media context, trademark owners should expect that cease-and-desist letters will be posted online for others, besides the alleged infringer, to read. As a result, cease-and-desist letters may create unexpected and unwanted public-relations issues.
When confronted with a party that is using your trademark (or, arguably, a confusingly similar trademark) without your permission, it is important to research the user. Find out whether the user is a fan, a parodist, a student, a counterfeiter, a cybersquatter, or an individual or small business that may curry favor or sympathy with the public. What you learn about the user should influence the tone of and demands made in your letter. Refine cease-and-desist letters to fit particular situations. Form letters often are ineffective and may provoke a response that is more hostile than one that is tailored to the specific facts and that sets a reasonable tone. When in doubt, pick up the phone. A one-on-one conversation may be an effective way to resolve the issue amicably—without creating a paper trail. In appropriate circumstances, consider permitting continued use of the trademark by the third-party in a controlled fashion. For example, the mark owner might license its mark for use by the third party. Of course, this option should be thought through carefully, because with a license comes the obligation on the trademark owner to exercise quality control over the goods/services offered in connection with the mark. Alternatively, a trademark owner could require a website/web-based business to include a disclaimer that it is not affiliated or associated with the trademark owner. Additionally, in cases where nominative or fair use considerations are germane, the brand owner could consider requiring that a hyperlink to the webpage of the trademark owner be provided.
The explosive growth of social media requires a corresponding flexibility and adaptation of how trademark owners (and trademark lawyers) evaluate and respond to potential infringement issues. Illustrating this point are several examples of cease-and-desist letters that were perceived as being too mean, too nice, or just too interesting that they become Internet fodder.
For example, in the "too mean" category is the letter written by counsel for the National Pork Board who sent a 12-page cease-and-desist letter to ThinkGeek.com claiming that ThinkGeek's marketing of canned unicorn meat under the slogan "Unicorn—The New White Meat" infringed the National Pork Board's federally registered trademark, The Other White Meat. As it turned out, and perhaps not surprisingly, the canned unicorn meat offering was a fake. It was ThinkGeek's April Fools' Day joke (arguably belied by the fact that the meat promised to be an "excellent source of sparkles"). ThinkGeek posted the first page of the letter on its website and issued a response: "It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn." The New York Times and other national media outlets picked up the story and many readers got a good chuckle over a trademark owner's concern about a canned fake-meat product. As mentioned above, conducting an investigation into the facts attending an alleged infringer's use of the mark is important before any letter is sent. An investigation can uncover potential defenses that may be available to the alleged infringer or facts that mitigate or eliminate your client's trademark concerns. Doing a little homework at the outset can help to avoid pitfalls later.
Another example of a dispute that went viral following the sending/receipt of a cease-and-desist letter is that between Bo Muller-Moore, a Vermont-based artist and maker of hand-silk-screened T-shirts emblazoned with the words Eat More Kale, and Chick-fil-A, the second largest fast-food chicken restaurant chain in the United States and the owner of federal trademark registrations for Eat More Chickin for use on T-shirts. The letter demanded that Muller-Moore stop using the Eat More Kale mark and surrender the eatmorekale.com domain name to Chick-fil-A. Rather than recoil and capitulate, Muller-Moore took to social media to fight back against Chick-fil-A. Muller-Moore used his EatMoreKale.com Facebook page to inform his supporters of Chick-fil-A's demands. Muller-Moore supporters thereafter started a petition on the website Change.org entitled "Chick-fil-A: Stop Bullying Small Business Owner," which has nearly 36,000 signatures. The story got picked up by the national press, such as The New York Times, The Christian Science Monitor, The Boston Globe, and the Los Angeles Times, portraying the dispute as a David versus Goliath story. Politicians also got in on the action. Vermont's governor held a press conference in which he sent Chick-fil-A a "clear message" of support for Muller-Moore, proclaiming: "Don't mess with Vermont. Don't mess with kale. Chick-fil-A, get out of the way because we are going to win this one." See the YouTube video. While it is difficult to predict whether a state governor will pick sides in a trademark fight, trademark owners should nonetheless consider in advance what it will do if the alleged infringer does not accede to its demands. To date, Chick-fil-A has not filed suit against Muller-Moore though it is undoubtedly closely following the progress of his pending federal trademark application for Eat More Kale.
At the other end of the spectrum is what has been dubbed the "most polite cease-and-desist letter of all time." Patrick Wensink, a fan of Jack Daniel's whiskey, authored a book and commissioned a cover for the novel that featured a design that was strikingly similar to that found on a Jack Daniel's whiskey bottle. The owner of the Jack Daniel trademark fired off a cease-and-desist letter to Wensink. In it, an in-house attorney for Jack Daniel's Properties, Inc. asserted "[w]e are certainly flattered by your affection for the brand . . . and appreciate the pop culture appeal of Jack Daniel's . . . [but] we simply request that you change the cover design when the book is reprinted. If you would be willing to change the design sooner than that … we would be willing to contribute a reasonable amount towards the costs of doing so." What? Where's the "cease"? Where's the "desist"? Like The Other White Meat letter, the letter from Jack Daniel's was posted online. As a result, the story was picked up by numerous media outlets including Esquire, The Atlantic, and The Huffington Post, most of which credited the trademark owner for its reasonable approach. And best of all for the trademark owner, Wensink decided to change the cover art.
Lesson 5: Be Flexible
So, is it better to say "please and thank you" instead of "cease and desist"? It certainly worked for Jack Daniels. The soft approach, though, may not work in all cases. In certain situations, a formal cease-and-desist letter, however polite, may not be required at all. A less-formal approach may be warranted depending upon, for example, how serious the matter is for the trademark owner or whether the parties market related or unrelated goods or services. If the recipient is a competitor or a known cybersquatter, then a more traditional approach may be in order. Who the recipient of the letter is ultimately influences the tone of the letter. Is the recipient a fan, a licensee, an agent, or a distributor? If so, a softer tone may be appropriate. A telephone call either from a business person or from in-house counsel may be better suited to certain situations. In fact, you may learn details during the call that will impact how to navigate the dispute thereafter. And telephone conversations cannot be posted online. In other situations, sending an email to the target can help to set an informal and less aggressive tone (depending on the content of the email, of course). Trademark owners should be flexible, adopting the method and approach that best suits the circumstances instead of firing off a standard cease-and-desist letter out of habit. It may be better to draw bees with honey after all.
Keywords: litigation, intellectual property, cease-and-desist letter, trademark infringement, social media, slogans