"I just saw someone using our trademark on their website. Can you put together a cease-and-desist letter telling them to stop immediately?"
This is a question posed on a daily basis to trademark lawyers from clients. In some cases, even customers or well-intentioned members of the public bring instances of trademark infringement to the attention of trademark owners. Often, these situations are urgent, and the request to send a cease-and-desist letter is correspondingly urgent, as if immediate action is necessary to redress the situation. Often, though, a hasty response sent without first conducting an adequate pre-cease-and-desist letter investigation will produce an undesirable outcome. Indeed, spending time to develop relevant facts will assist counsel in fashioning a more appropriate and effective response. As a consequence, resisting the natural impulse to respond immediately to the alleged "infringement" until more facts are known can be the most prudent course to adopt.
In general, a trademark owner has a duty to police its marks and protect consumers from marketplace confusion. If it does not take steps to protect its trademark from misuse by third parties, its trademark rights may be weakened. As a result, the cease-and-desist letter is the go-to tool in a trademark lawyer's (or trademark owner's) toolbox. It is often the first step in the process of enforcing and protecting a trademark owner's rights. But should you send a cease-and-desist letter? And if so, what should it say?