Is a cease and desist letter enforceable?

• English

You may know that your Intellectual Property (IP) rights have been infringed, but to stop a violation in its tracks and boost your chances of receiving appropriate compensatory restitution, it is vital to approach the matter in a methodical, step-by-step manner. In most instances, this begins with sending a carefully prepared, precise cease and desist letter.

The IP laws in most jurisdictions make it incumbent upon any plaintiff who alleges patent or trademark infringement or a similar IP rights violation to provide judges and other presiding officers with extensive evidence supporting their claim. A patent or trademark owner cannot simply begin proceedings for infringement and expect to come out triumphant without meeting the relevant evidentiary standard.

Where intentional infringement is a requirement either to succeed in a complaint or to be able to collect (additional) damages, hard proof of willfulness is necessary. One way of obtaining that evidence is to show that the infringer was sent a letter notifying them of the plaintiff's rights and that the infringement continued despite that guilty knowledge.

What is the purpose of a cease and desist letter?

In the context of IP infringement, a cease and desist letter is a notice usually sent to an alleged infringer by an attorney representing an IP owner, setting out their client's rights and explaining which actions of the recipient constitute offending conduct. The letter calls on the alleged infringer to halt this conduct and delineates steps (or "demands") with which the alleged infringer must conform to avoid court action. In this regard, these letters constitute formal notifications to the person or business receiving them.

For legal reasons, sending a cease and desist letter is often the first step to address infringement allegations. In addition to notifying the recipient of the consequences of not adhering to its terms, such a letter sets out the basic cause of action in writing and is likely to form part of the court record if the matter remains unresolved. Perhaps most importantly, the letter could be effective in ending the alleged infringement if the recipient agrees to the letter's demands or if it initiates a successful alternative dispute resolution (ADR) process, e.g., arbitration or a transaction.

In many jurisdictions, it is compulsory to engage the defendant in pre-litigious steps, and failing to do so may have repercussions such as the plaintiff not being able to recover costs. Elsewhere, a plaintiff would not have a cause of action without showing that an attempt was made to resolve the dispute via mediation before approaching the courts. Lastly, as mentioned above, the letter serves as evidence of intentionality, demonstrating that the infringer knew the plaintiff's rights should the offending conduct continue after receipt of the cease and desist notice.

When is a cease and desist letter the right approach in an IP dispute?

Due to the burden of proof associated with patent, trademark or copyright infringement, it is generally best to use a cease and desist letter as a test of sorts.

You want to see how the recipient reacts: If they put a stop to their infringing activity, then you are home and dry. Perhaps it was merely a misunderstanding, or they did not know they were infringing. If the recipient of your cease and desist letter claims it was a mix-up, they may well be telling the truth. In the event they stop the infringement after receiving the letter, their honesty is a moot point, but they may merit further monitoring.

Or it could be the other way around — the recipient might be able to argue fair use / fair dealing of your copyrights, no likelihood of confusion with your trademarks or non-use of your invention. If your lawyer were to review their explanation and agree, your initial cease and desist letter would have prevented you from going down a long, costly route of unnecessary litigation.

Sending a cease and desist letter could also be ideal where the breach is not statutory but relates to contractual matters, such as a trade secret that is protected by a non-disclosure agreement (NDA).

Lastly, and as mentioned above, it may be legally necessary for you to send a cease and desist letter in certain jurisdictions if you plan to sue for damages. Sending such a letter is a befitting good-faith gesture that, if ignored by the infringer, may serve as evidence of bad faith on their part. This can affect the extent of damages awarded and help determine whether the infringer must pay the full costs of the lawsuit.

What legal weight does a cease and desist notice have?

Strictly speaking, the recipient is not obligated to comply with a cease and desist letter. Nevertheless, it still serves as a critical legal document, setting out the plaintiff's grievance and creating a firm premise upon which a lawsuit can be built. Although it lacks the authority to compel action, the letter typically stipulates a time frame within which the recipient must terminate the offending activity or deliver a counter-response if they believe the notice was unwarranted.

How to send a cease and desist letter

If you find yourself in a situation where your IP rights are being infringed upon, taking immediate action is crucial. Here is a strategic approach to drafting and delivering this essential legal document.

1. Identify the infringement

The first task is pinpointing the nature of the infringement you are confronting. Whether relating to patents, trademarks, copyrights or a combination of assets, it is essential to specify exactly what material or actions violate which IP rights. If possible, establish the magnitude of the infringement and when it began.

2. Consult with legal professionals

Before putting pen to paper, consult a law firm or legal practitioner. An attorney specializing in IP law can guide you through the process, helping you tailor the cease and desist letter to your specific situation.

3. Elements of the letter

A cease and desist letter needs to be thorough and precise. It should start with an introduction naming the parties involved. Following that should be a detailed account of the infringing activity, pointing out which IP laws or rights have been breached. Lastly, it needs to lay out a series of demands or steps that the alleged infringer must undertake to prevent legal action.

Communicating persuasively is your top priority at this first stage. A poorly constructed cease and desist letter or one not drafted by a trusted firm risks being viewed as fraudulent. This perception could squander a vital opportunity to settle a dispute before heading into court, where costs quickly mount. 

4. Choose the appropriate tone

Your communication should be assertive without being excessively confrontational. Aim to establish a tone that is firm yet fair, one that underscores the severity of the infringement without escalating the situation into unnecessary conflict.

5. Modes of delivery

Depending on jurisdiction and the particulars of your claim, your best option for delivery might vary. Whether it is via certified mail, electronic communication or even personal delivery, ensure it is the most reliable means to serve a legal notice.

6. Time frames and documentation

Clarify the period within which the alleged infringer should respond or desist, reminding them that failure to do so could advance matters to formal legal proceedings. Maintain a record of all communications sent or received as they may serve as evidence in a subsequent court case.

What if the cease and desist letter you sent is ignored or violated?

Suppose the response period established in the cease and desist letter passes without a response or positive action from the allegedly infringing party to stop the infringement. In that case, it is time to take more serious legal action. Consult with an experienced IP lawyer to determine your next moves.

Make no mistake: Handling a cease and desist letter is a delicate matter, and even when perfectly crafted, it is not guaranteed to have the desired effect. In such cases, acquiring legal remedy becomes even more complex. For the best chance of success in court proceedings, you want an IP law firm with a global presence and comprehensive expertise like Dennemeyer & Associates on your side. We are well-equipped to stand up for your IP rights in any jurisdiction.