Attorneys are often hired to defend against allegations raised in cease and desist letters or issue cease and desist letters against alleged trademark, copyright and/or patent infringers. Of course, cease and desist letters are not limited to allegations of infringement, but for purposes of this article, we are discussing only cease and desist demands relating to allegations of infringement. Often, a cease and desist letter is a helpful tool to begin settlement discussions to resolve a dispute before it becomes necessary to incur the expense and burden of a lawsuit. If the respective parties are reasonable in their respective demands or expectations, there is greater potential to resolve disputes without litigation. However, when a party takes the initiative in issuing a cease and desist letter, the party receiving the cease and desist letter may respond by filing a preemptive lawsuit seeking among other things, a Declaratory Judgment of Non-Infringement under Federal Trademark, Copyright, Patent and/or Unfair Competition law. 28 U.S.C. § 2201, et seq.
By filing the lawsuit first, the party that would have otherwise been the Defendant in a lawsuit as the alleged infringer now becomes the Plaintiff. Further, if the parties are in different jurisdictions and the lawsuit is brought in the alleged infringing parties’ jurisdiction, a question of personal jurisdiction over the defendant may arise and often adds considerable cost to any lawsuit. Accordingly, the decision to issue a cease and desist letter is more complex than many parties realize.
The above-referenced issues are not intended to be exhaustive, but merely examples of potential issues associated with issuing a cease and desist letter with respect to infringement allegations.
**Nothing herein is intended to be legal advice and does not create an attorney-client relationship.