March 24, 2023


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Stop and Desist Letters to Shield Your IP: Simply the Information and Legislation

3 min read

My regulation 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 “straight away” 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 details first, after which plan a method after that. The details affect whether or not a stop and desist letter is sensible in any respect (they often do), and what we’ll say in that letter.

The aim is to get the infringing firm to cease transport the infringing product exterior 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 regulation agency’s worldwide IP attorneys. One of many emails word how we first should collect the related details earlier than we will ship a stop and desist letter as a result of sending such a letter would possibly immediate its recipient to file a lawsuit in opposition to our shopper, in search of a court docket 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 received sued for tens of millions by the large firm recipient of that letter. This firm needed to know if we may defend them on this difficult worldwide litigation matter for a $25,000 flat price, as a result of that was all it may pay. I mentioned that might not be potential and perhaps they need to see if the lawyer who despatched the stop and desist letter would possibly a minimum of share within the litigation prices. I by no means heard again from this firm and — not surprisingly — it seems to not exist.

However I digress.

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

  • When had been you based, and when did you start business operations?
  • When did you begin promoting ______ product?
  • When did your web site first go dwell?
  • 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 had been you made conscious that ______ firm’s merchandise had been being bought in america?
  • Are ________ firm’s merchandise bought solely by 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 regarding 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 had 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 details earlier than performing.

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