My law firm often gets calls from companies alleging “a company is selling their product under their trade name on Amazon” and asking us to send a cease and desist letter “right away” to get that company to stop violating their IP. Our typical response is to say it is seldom a good idea to just “whip out” a cease and desist letter. We need to know more of the facts first, and then plan a strategy after that. The facts influence whether a cease and desist letter makes sense at all (they almost always do), and what we will say in that letter.
The goal is to get the infringing company to stop shipping the infringing product outside China (or Vietnam or Malaysia or Thailand or Mexico or Indonesia or India, or wherever else it is making the product) without our client having to incur the cost, hassle and delay of bringing a lawsuit.
I was reminded of all this the other day because I was cc’ed on a couple of emails between one of my law firm’s international IP lawyers and one of our international company lawyers. The IP lawyer sent the email noting we first must gather the relevant facts before we can send a cease and desist letter because sending such a letter might prompt its recipient to file a lawsuit against our client, seeking a court order finding that our client does not have any basis for challenging the recipient’s IP usage.
The email then lists out the following questions to which we need answers from our client to position us to determine an optimal cease and desist strategy:
- When were you [our client] founded, and when did you begin commercial operations?
- When did you start selling ______ product?
- When was your website initiated?
- When did you begin selling _____ product on your website?
- Do you sell and/or ship ______ product in every state?
- What marketing activities have you undertaken in the various states?
- When were you made aware that ______ company’s products were being sold in the United States?
- Are ________ company’s products only sold through Amazon?
- When did you file your U.S. Patent and Trademark Office (“USPTO”) trademark registrations?
- What pre-application trademark searches did you or anyone else conduct in the United States concerning the marks _______ and _______? If you have any pre-application search results/materials, please email those to us.
- Have you registered your image copyrights? If so, when?
- Did you create the images or were these created for you by an agency? If by an agency, did you sign an agreement with the agency pursuant to which you own the images? If so, please email us a copy of the agreement.
- If possible, please email copies of the images the _____ company is infringing.
It pays to have the facts….