Cease-and-Desist Letters in Trademark Law
Respond quickly and correctly – whether you have received a cease-and-desist letter or intend to send one
A trademark cease-and-desist letter usually arrives without warning and sets short deadlines. Ignoring it risks a preliminary injunction and substantial costs. Signing it too hastily may bind you permanently and expose you to a contractual penalty. We review your cease-and-desist letter promptly and advise you on the steps that make sense now. We likewise support you if you wish to take action yourself against the infringement of your trademark.
What is a trademark cease-and-desist letter?
By means of a cease-and-desist letter, the proprietor of a trademark calls upon the infringing party to end the infringement without recourse to court proceedings. Such a letter generally contains a pre-formulated cease-and-desist undertaking backed by a contractual penalty, a deadline and a demand for reimbursement of costs. Its purpose is to avoid litigation. If the recipient fails to respond (or fails to respond within the deadline), the trademark proprietor may initiate court proceedings without further notice.
What you should do when receiving a cease-and-desist letter
- Note the deadline: The deadline set is often very short. Do not allow it to expire.
- Sign nothing: The enclosed cease-and-desist undertaking is frequently drafted more broadly than necessary.
- Do not contact the other side: Premature statements can close off the path to a fair settlement.
- Secure your documentation: Since when and in what manner you have used the sign may prove decisive.
- Obtain a legal review: Whether the cease-and-desist letter is justified depends on a range of specific details.
Is the cease-and-desist letter justified?
Among other points, we examine the following:
- Is the trademark asserted against you registered, and is the sender in fact its proprietor?
- Is there a likelihood of confusion between the signs and between the goods or services?
- Is the trademark put to genuine use? Once the five-year grace period for use has expired, an unused trademark may be open to attack.
- Do you hold earlier rights of your own, such as a trade name used at an earlier date?
- Is the claim for costs justified in the amount asserted?
Your options
- Modified cease-and-desist undertaking: If the letter is justified in substance, we limit the undertaking to what is legally required.
- Rejection: If the letter is unjustified, we reject it with reasons.
- Counterattack: Depending on the facts, options include an application for revocation of the sender’s trademark for non-use, or a cease-and-desist letter of your own.
- Settlement: A coexistence agreement or a sell-off period can often be negotiated.
Do you wish to send a cease-and-desist letter yourself?
Where your trademark is being infringed, a cease-and-desist letter is usually the fastest and most cost-effective route to obtaining an injunction. We assess the infringement, draft the letter together with an appropriate cease-and-desist undertaking and, if necessary, enforce your claims in court. You will find further information on our page on trademark infringement.
Costs of a trademark cease-and-desist letter
Attorneys’ fees are calculated on the basis of the value in dispute, which the courts often set at a high level in trademark matters. Where the cease-and-desist letter is justified, the infringing party must reimburse the sender’s legitimate costs. We assess your cost exposure so that you know precisely what risk you are taking on.
Related topics: Trademark Law | Trademark Infringement | Trademark Searches | Unfair Competition Law
Arrange a consultation
Our certified specialist attorneys for industrial property law will review your cease-and-desist letter at short notice. Please send us the letter in advance by email.
FAQs
In most cases a response is strongly advisable. Without one, you risk a preliminary injunction, which gives rise to considerably higher costs.
A short extension can often be negotiated, but it is not guaranteed. Until an extension has been granted, the original deadline applies.
As a rule, you commit yourself permanently to ceasing use of the sign. Every breach of that commitment triggers a contractual penalty.
Where the cease-and-desist letter is justified, the recipient usually does. Where it is unjustified, a claim for reimbursement of costs may conversely arise in the recipient’s favour.
Our Services
- Legal advice regarding warnings, both for the sender and the recipient
- Enforcement of your trademark in contentious proceedings
- Defense of your trademark rights
- Conducting trademark infringement proceedings
- Representation before all ordinary courts
- Individual advice on your trademark strategy
- Examination of the registrability of your desired trademark
- Drafting a list of goods and services
- Preparation and registration of your trademark
- Trademark monitoring
- Care and management of your trademark
- Deadline monitoring