As with any successful product, imitations are inevitable. If your product starts gaining traction and suddenly imitation products with similar concepts, trademarks, and packaging appear, the first step is to send a polite request asking for the cessation of trademark use.
As a trademark owner, you are within your rights to file a complaint or pursue legal action, including an injunction or a damages claim. However, since no one enjoys lawsuits, most people prefer to send a cease-and-desist letter before taking formal legal action, unless there’s significant bad blood between the parties.
Contents of the Letter
The letter should include the following three elements:
- Proof of Ownership:
Demonstrate that you are the trademark owner by attaching documents such as the trademark registration certificate or registry extract. - Description of the Infringing Activity:
Clearly specify the actions that may constitute trademark infringement. This could include photos of storefronts, screenshots of websites, product images, business cards, catalogs, or other materials. - Specific Demands:
Clearly state your demands, such as product disposal, removal of infringing content from online platforms, and a written commitment to cease further use of similar trademarks. You may also request a settlement payment. Additionally, cite the relevant clauses from the Trademark Act or the Unfair Competition Prevention Act and provide a deadline for a response.
How to Send the Letter
The letter does not necessarily need to be sent as certified mail. You can send it via email, fax, or even direct message (DM). However, sending it through certified mail is advisable, especially for potential future legal proceedings, as it serves as evidence that the infringer was informed. Once the infringer receives the certified letter, any further use of the trademark will be considered intentional.
Sending a certified letter also demonstrates the rights holder’s serious intent to resolve the issue.
Important Considerations
- Avoid Absolute Statements:
Clearly state the facts regarding your ownership and the infringer’s use of the trademark. However, avoid making definitive statements about trademark similarity, product relevance, or legal violations. Instead, frame these points as potential concerns.
For example, phrases such as “may constitute infringement,” “requires careful consideration,” or “may confuse consumers into thinking the products are related” are more prudent.
Trademark infringement is assessed based on various factors, including the actual use of the registered trademark, grounds for invalidation or cancellation, the nature of the infringing party’s use, and the likelihood of consumer confusion. In criminal cases, the presence of criminal intent is also considered.
- Avoid Intimidation:
Do not write in a manner that could be interpreted as threatening or demand excessive compensation. Since you are sending a “request” rather than a formal warning, it is better to politely inform the recipient of the potential risks and advise them to change their trademark. There have been cases where excessive demands led to damages claims against the rights holder and their representatives for business interference.
What if They Refuse to Comply?
In most cases, receiving a certified cease-and-desist letter prompts the recipient to either change the trademark or explore alternative solutions. However, in rare cases, the recipient may completely ignore the letter, continue using the trademark, or even expand their operations. Some may even respond with hostility, daring you to “take legal action.” In such cases, you may have no choice but to pursue legal, criminal, or administrative remedies.