We’ve written quite a bit over the last three years about the important topic of trademark enforcement. As you may have gathered from past writings, I’m one who believes the academic community’s concentration on the supposed evil of trademark demand letters is overblown.

And, as you may recall, I’m not a fan of simply ignoring them, even when they are objectively baseless, because it sends exactly the wrong message back to the sender.

What I am greatly in favor of is the development of a strategic framework for responding to trademark enforcement cease and desist letters. Recognizing that trademark disputes are highly fact intensive where no two are just the same, here is a very general skeleton outline that I have found helpful in preparing responses over the years:

  1. Determine the Recipient’s Goals & Objectives
  2. Scrutinize the Asserted Claims & Demands
  3. Size Up the Adversary, Their Counsel & Likely Goals
  4. Identify Options & Recommended Course of Action
  5. The Mechanics and Executing the Approved Strategy

To the extent you’d like to see more meat on these large bones, consider tuning into Strafford’s upcoming program on Trademark Enforcment, where I’ll be speaking on strategies for responding to trademark cease and desist letters. The first three comments to this blog post will enjoy free attendance at tomorrow’s webinar.

If you aren’t quick enough on the draw or you’re are unable to attend, fear not, my plan is to post a series that fleshes out each of these approaches in the above outline, one by one.

  • Cool_Romeo

    Thank you. I’d like to attend, or at least receive the materials.

  • Great topic, and I look forward to your future posts about how you approach creating a quality response to cease-and-desist letters. In regards to “trademark bullying,” that label seems to be applied when the asserted claims and demands are excessive (Item 2) and there is a significant disparity of financial power in favor of the adversary (Item 3). When a weaker recipient is involved, a good cease-and-desist letter explains the reasonableness of the claims and demands, while downplaying the scale of legal force that could be deployed if the demands are not met. This makes it easier for a recipient to carry out items 2 and 3 without prematurely concluding that the claims are baseless and the goal is to bully.

  • Dan Kang

    Great topic! I’d like to attend the CLE. Thanks.