Stop and Desist Letters to Defend Your IP: Simply the Details and Regulation

My legislation agency usually will get calls from corporations alleging “an organization is promoting their product underneath their commerce identify on Amazon” and asking us to ship a stop and desist letter “immediately” to get that firm to cease violating their IP. Our typical response is to say it’s seldom a good suggestion to only “whip out” a stop and desist letter. We have to know extra of the information first, after which plan a technique after that. The information affect whether or not a stop and desist letter is sensible in any respect (they normally do), and what we are going to say in that letter.

The objective is to get the infringing firm to cease delivery the infringing product outdoors China (or Vietnam or Malaysia or Thailand or Mexico or Indonesia or India, or wherever else it’s making the product) with out our shopper having to incur the fee, problem, and delay of bringing a lawsuit.

I used to be reminded of this the opposite day after being cc’ed on emails between a few my legislation agency’s worldwide IP attorneys. One of many emails observe how we first should collect the related information earlier than we are able to ship a stop and desist letter as a result of sending such a letter would possibly immediate its recipient to file a lawsuit towards our shopper, in search of a courtroom order that our shopper does not have any foundation for difficult the recipient’s IP utilization.

It jogged my memory of an organization who paid a lawyer $250 to ship out a stop and desist letter after which bought sued for tens of millions by the massive firm recipient of that letter. This firm wished to know if we might defend them on this difficult worldwide litigation matter for a $25,000 flat price, as a result of that was all it might pay. I mentioned that might not be potential and possibly they need to see if the lawyer who despatched the stop and desist letter would possibly at the least share within the litigation prices. I by no means heard again from this firm and — not surprisingly — it seems to now not exist.

However I digress.

The e-mail lists out the next inquiries to which we’d like solutions from our shopper to place us to find out an optimum stop and desist technique:

  • When have been you based, and when did you start business operations?
  • When did you begin promoting ______ product?
  • When did your web site first go stay?
  • When did you start promoting _____ product in your web site?
  • Do you promote and/or ship ______ product in each state?
  • What advertising actions have you ever undertaken within the numerous states?
  • When have been you made conscious that ______ firm’s merchandise have been being bought in america?
  • Are ________ firm’s merchandise bought solely via Amazon?
  • When did you file your U.S. Patent and Trademark Workplace (“USPTO”) trademark registrations?
  • What pre-application trademark searches did you or anybody else conduct in america in regards to the marks _______ and _______?  In case you have any pre-application search outcomes/supplies, please e mail these to us.
  • Have you ever registered your picture copyrights?  In that case, when?
  • Did you create the photographs or have been these created for you by an company?  If by an company, did you signal an settlement with the company pursuant to which you personal the photographs?  In that case, please e mail us a duplicate of the settlement.
  • If potential, please e mail copies of the photographs the _____ firm is infringing.

It pays to have the information earlier than appearing.