What to do if you receive a ‘Cease and Desist’ letter

A first step in many legal disputes concerning Intellectual Property (IP) is the issuing of a ‘Cease and Desist’ letter. This is a communication, from or on behalf of the owner of an IP right (e.g., a Patent or Trademark), and addressed to a party who the IP owner believes to be infringing that IP right. It will usually identify the relevant IP right, specify the acts that are considered to be an infringement, and demand that the receiving party stops those acts. The receipt of a cease and desist letter is rarely welcome and deciding what to do next can seem daunting. This article seeks to allay some fears by outlining the steps you should, and should not, take.

It is easy to say, but if you receive a cease and desist letter, don’t panic! But equally, do not ignore it. You should contact the sender promptly to acknowledge receipt but at this stage, you do not need to address any of the substantive issues which may have been raised.

The sender of a cease and desist letter should indicate when they expect you to reply to the allegations made. A reasonable period of time should be provided so you are not obliged to reply immediately, however neither should you put the letter on the ‘too difficult’ pile. A cease and desist letter does not, in itself, constitute legal proceedings but failure to deal with one in good time can precipitate such proceedings.

At this point, you should think about contacting an IP attorney. Before making any formal response, it is important to fully understand the contents of the letter, the nature of IP right sought to be enforced, and its relevance, if any, to your commercial activities.

Your attorney will be able to check whether the IP right is actually in force and if so, where, and even if it really belongs to the party who wrote to you. You will also be able to discuss any legal avenues and defences which may be available. For example, does the IP right actually cover your commercial activities as alleged? Is the IP right robust or can good arguments be raised against its validity? Can you easily alter your products or commercial activities to take them outside the scope of the IP right?

Once armed with all relevant information, your attorney will help you to reply to the cease and desist letter. Most parties are reasonable and would rather see an amicable settlement to a dispute rather than take formal legal proceedings. It may be appropriate to take a firm position, for example when you feel you have a strong legal defence and where continuing with your activities is commercially important. In other circumstances, for example where stopping certain activities would have little or no commercial impact, simply agreeing to the other party’s request may be the most pragmatic option.

Our attorneys here at Mathisen & Macara are experienced in dealing with disputes concerning IP rights such as patents and trade marks. So, if you unfortunate enough to find yourself in receipt of a cease and desist letter, don’t panic, we are here to help!