Cease-and-desist letters: Five ways to keep your client and yourself from looking foolish

A ‘typical’ cease-and-desist letter shrilly accuses the addressee of willful misconduct; sternly warns that legal action will be taken if the addressee doesn’t stop the misconduct by such-and-such a date; and demands that the addressee confirm in writing that the misconduct has stopped.  (See here and here for a couple of examples.)

A kinder, gentler approach is almost always better – not least because the cease-and-desist letter might someday be read by a judge, by jurors, and/or by journalists and bloggers.

1. Think about whether sending the letter is such a good idea:  ThinkGeek published an April Fool’s spoof about unicorn meat, which it labeled as “the new white meat.”  The National Pork Board had its lawyers write a cease-and-desist letter alleging infringement of the trademark “the other white meat.” Both the Board and its lawyers were ridiculed in the blogosphere. (Link)

2.  Consider what the other side might do for a counter-attack:  A client once received a cease-and-desist letter complaining about the client’s use of a certain term, for which the other side had obtained a federal trademark registration.  I sent the other lawyer a draft of a petition to cancel the registration, on grounds that the term in question was gen­er­ic, along with a draft affidavit citing more than 50 generic uses in the wild.  That was the last we heard from them.

3. Skip the histrionics – just the facts, ma’am:  A calm, professional tone runs less risk of pissing off the other side, which can reduce the chances of a quick resolution. Moreover, professionalism comes across better to outsiders than shrillness.

Instead of making accusations, I simply summarize relevant available evidence – preferably in bullet points, as opposed to long narrative paragraphs. 

I also like to attach copies of relevant non-confidential documents.  I do this in part to educate the other side’s lawyer, and also to create a handy guidebook for the judge and jury.

4.  Never threaten to sue – when the time comes, just do it.  More on that subject here.

5.  Don’t set a compliance deadline, nor demand a written response:  Here’s an easy way to look amateurish:  Set a deadline for the other side to comply with your cease-and-desist demands, but then don’t take any action after the deadline passes – or worse, write another C&D letter, saying “this time we really mean it.”

A better approach is to say something mild-mannered, along the lines of “my client hopes that you will stop doing X and confirm this in writing to us no later than such-and-such a date” (emphasis added). Then proceed to #4 above.