Cease and Desist – What To Do (Besides Panic) Upon Receipt of This Letter
When clients need to create marketing tools for their businesses which include trademarks, advertising, brochures, direct mailers, websites, signage and other highly visible digital and printed communications, they are often oblivious and sometimes dismissive about the stringent laws protecting copyrights and trademarks against infringement. However, if a rights or mark violation is detected by the owner of record, he may commission his lawyer to draft a “cease and desist” letter which usually shocks the recipient into an immediate state of panic with only days in which to respond.
Such letters serve to notify the alleged offender that a lawsuit may follow should the offending activity continue and that “damages” may be determined by how much revenue/profit was generated as a result of such activity.
Since I am in the thick of it as the creator of the marketing items mentioned above, my clients share such notices with me in the hopes that I can somehow help them out of trouble. Equally shocked by such news since I never intentionally engage in any kind of infringement activity, I first inform my clients that I am not an attorney and therefore cannot legitimately advise them of their legal rights or ramifications of such a letter. And, since work with my clients is very much a team effort, involving instructions, guidance and ultimately approval from my clients before proceeding with printing or publishing any final marketing efforts for them, my surprise at the receipt of such a letter cannot be masked. I do share with them previous experiences and my suggestions about how best to proceed.
On a recent such occasion, my client decided after much anguish and disbelief, that the best course of action would be to consult a trademark attorney for expert representation. While I have often written letters for clients to successfully support their legal stance, I could not argue the virtues of this decision because of one undeniably important fact. Although my client and I are both individual business owners, the client behind the cease and desist letter was a multinational corporate behemoth with very deep pockets using a nationally based law firm with offices in Manhattan.
This did not surprise me since the work I do for my clients has powerful marketing strength, with highly attractive graphics and equally compelling messages, vaulting them to the top of Google rankings which result in stellar sales and incredible notoriety. It is no wonder that such a large corporation would fear the threat of competition from my client, both of whom are selling to the same market. What was puzzling about this situation was that my client’s marketing is extremely supportive of the corporation in question since my client’s items are meant to enhance this corporation’s products. Without the corporate products, there would be no market for my client to serve.
After more than a decade of working together, my client would be the first to admit that my marketing efforts are largely responsible for his rise to fame which ironically includes sales to divisional units of this same corporation. Many of these corporate units have recognized the value of my client’s products to adorn their brand as a way to improve their own sales, not deter them. But it seems the members of the corporate elite at the helm of this company’s Asian headquarters worry that my client is attempting to take business away from them, clearly a misunderstanding on their part.
What was the nature of the cease and desist letter? The corporate lawyer itemized a number of alleged infringements:
1. Use of a typestyle to identify their products which was not their logo but was close enough to possibly cause market confusion.
2. Failure to obviously differentiate our products from theirs, the difference being aftermarket vs. original equipment manufacturing, respectively.
3. A number of stipulations about size of text used on the name of this corporation (too large!), size of text used in our disclaimer information (too small!) and use of their corporate name within photos of their own products on which our products can be used. (Do we detect envy here?)
4. Use of the corporate name on our products, an erroneous assumption made by the corporation based on the use of their name on their own products within some of our photos. Note that the corporate lawyer clarified that we were not infringing on any rights by using their name or showing their products to sell our goods which are designed and manufactured to complement and accessorize their products. This is quite legal. What they were protesting were our alleged “unfair business practices” which possibly were taking business away from them.
At my client’s request, I provided his lawyer with extensive research I had done in support of my client showing similar instances of the alleged offending citations; examples of disclaimer text size used on countless other websites, including the corporation’s own website (which is much smaller than that used on my client’s website!); and proof that none of our products display the corporation’s logo or any facsimile of it whatsoever. These examples were forwarded to the corporate lawyer with a sentence or two from my client’s attorney.
In the meantime, allowing the lawyers to speak to each other in their own language on their own schedule had bought us extra time in which to implement any necessary changes. Since my client had given me free rein to address all complaints as I determined necessary, I decided that compliance would be the best route to curtailing any further action which could involve more than a decade’s worth of my client’s annual revenues. Despite knowledge that my client felt 100% justified in the use of the corporate name in the tasteful manner in which we had done to date and was peeved by having to make so many changes for no apparent gain, I decided that a total marketing re-design could satisfy the corporation while elevating my client’s brand to a new level of excellence. In essence, why not capitalize on a seemingly grave situation to transform it into a positive opportunity for growth and profit?
Luckily, my client did not have a problem with emphasizing that his products are truly aftermarket in nature (meaning not OEM or original equipment manufacturing) because OEM products are frequently perceived as overly expensive and sometimes of inferior quality in comparison and my client’s aftermarket products are often sought as a better alternative to OEM at a better price! Furthermore, replacing the corporate name with my client’s company name was a giant step forward to stronger branding for my client’s business, something he had been timid about doing for the majority of his years in business for fear of overshadowing the corporate name on the products for which his items are made.
So, I began the arduous task of redesigning every page of his website, his printed materials and signage; rewriting text to comply with the corporate requests (verbatim!); removing their name from every photo of their products showing use of our products; and lengthening our already very comprehensive disclaimers to include every detail of their verbiage including statements that we “do not sell original equipment manufacturing” and that “we are in no way affiliated with, authorized by or connected with” the corporation in question. I made sure that these changes were made on every one of our more than 90 web pages and countless other marketing items!
Once this work was complete, our lawyer informed us that our new presentations had passed muster with the corporate lawyer and his clients, satisfying all alleged transgressions and terminating any further action at this time.
Since we had never previously mentioned the term OEM or original equipment manufacturing anywhere within our material, I informed my client that the use of such terms repeatedly on every page of our website would increase the likelihood that Google searches would now list our pages in response to those search terms, in addition to our excellent ranking for aftermarket searches, opening up a new market for awareness and possible sales. It seems that the corporation’s complaints were in fact helping my client while simultaneously shooting themselves in the foot, so to speak!
With this knowledge, my client celebrated not only the relief of legal rectitude but triumph in defeat! Granted, he may have paid his trademark lawyer handsomely for delivering my messages to the corporate lawyer, and paid me for all my work to correct his supposed infractions, in the end he benefited greatly with better branding, legal fortitude and the prospects of bigger profits to come, not just from his worldwide consumer market but also from the now ingratiated corporation who probably feel the victory was theirs alone. Who knew cease and desist could translate as win-win?
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