When customers need to create marketing tools for their businesses, including trademarks, advertising, brochures, direct mail, websites, signs, and other highly visible digital and print communications, they often ignore and sometimes disregard the strict laws that protect copyrights and trademarks against infringement. . However, if the record owner detects a copyright or trademark violation, they can have their attorney draft a “cease and desist” letter that typically sends the recipient into an immediate state of panic with only days to respond. .
Such letters serve to notify the alleged infringer that a lawsuit may follow if the infringing activity continues and that “damages” may be determined based on the amount of income/profits that were generated as a result of such activity.
Since I am in the middle of this as the creator of the aforementioned marketing elements, my clients share such notices with me in the hope that I can somehow help them out of the problem. Equally shocked by such news, as I never intentionally engage in any kind of infringing activity, I first inform my clients that I am not an attorney and therefore cannot legitimately inform them of their legal rights or the ramifications of such a letter. And, since working with my clients is very much a team effort, involving instructions, guidance, and ultimately approval from my clients before proceeding to print or publish any final marketing efforts for them, my surprise upon receiving such a letter cannot be concealed. I share with them previous experiences and my suggestions on the best way to proceed.
On a recent occasion, my client decided, after much anguish and disbelief, that the best course of action would be to consult a trademark attorney for expert representation. While I have often written letters for clients to successfully support their legal position, I could not argue the virtues of this decision due to one undeniably important fact. Although my client and I are individual business owners, the client behind the cease and desist letter was a multinational corporate giant with deep pockets utilizing a national law firm with offices in Manhattan.
This didn’t surprise me, as the work I do for my clients has a powerful marketing force, with very attractive graphics and equally compelling messaging, elevating them to the top of Google’s rankings, resulting in stellar sales and a incredible notoriety. No wonder such a large corporation fears the threat of competition from my client, who are selling to the same market. The puzzling thing about this situation was that my client’s marketing is very supportive of the corporation in question, as my client’s articles are intended to improve the products of this corporation. Without corporate products, there would be no market to serve my client.
After more than a decade of working together, my client would be the first to admit that my marketing efforts are largely responsible for his rise to fame, which ironically includes sales to divisional units of this very corporation. Many of these corporate units have recognized the value of my clients’ products to adorn their brand as a way to enhance their own sales, not deter them. But it seems that members of the corporate elite running this company’s Asian headquarters are concerned that my client is trying to take the business away from them, clearly a misunderstanding on their part.
What was the nature of the cease and desist letter? The corporate attorney detailed a number of alleged violations:
1. Using a typeface to identify your products that was not your logo but was close enough to cause market confusion.
2. Failure to obviously differentiate our products from theirs, the difference being aftermarket vs. original equipment manufacturing, respectively.
3. A number of stipulations regarding the size of text used in this corporation’s name (too large!), the size of text used in our disclaimer information (too small!), and the use of your corporate name within the photos of your own products in which our products can be used. (Do we detect envy here?)
4. Use of the corporate name on our products, an erroneous assumption made by the corporation based on the use of its name on its own products within some of our photos. Please note that the corporate attorney clarified that we were not infringing on any rights by using your name or displaying your products to sell our products, which are designed and manufactured to complement and personalize your products. This is quite legal. What they were protesting was our alleged “unfair business practices” that were possibly taking business away from them.
At my client’s request, I provided his attorney with extensive research I had conducted in support of my client showing similar instances of the alleged infringing citations; examples of the disclaimer text size used on many other websites, including the corporation’s own website (which is much smaller than the one used on my client’s website!); and proof that none of our products display the corporation logo or any copy thereof. These examples were sent to the corporate attorney with a sentence or two from my client’s attorney.
In the meantime, allowing attorneys to speak to each other in their own language on their own schedule gave us more time to implement the necessary changes. Since my client had given me free rein to address all complaints as I deemed necessary, I decided that compliance would be the best route to reduce any further action that might involve more than a decade of my client’s annual revenue. Despite knowing that my client felt 100% justified in using the corporate name in the elegant way we had done to date and was annoyed at having to make so many changes for no apparent gain, I decided that full-on marketing re- the design could satisfy the corporation while elevating my client’s brand to a new level of excellence. In essence, why not capitalize on a seemingly dire situation to transform it into a positive growth and profit opportunity?
Fortunately, my client had no problem emphasizing that their products are truly aftermarket in nature (i.e. not OEM or original equipment manufacturing) because OEM products are often perceived as overpriced and sometimes substandard. In comparison and my customer’s aftermarket products are often sought after as a better alternative to the OEM at a better price. Also, replacing the corporate name with my client’s company name was a big step towards a stronger brand for my client’s business, something he had been shy about doing for most of his years in business out of fear to outshine the corporate name on the products their items are made for.
So, I began the arduous task of redesigning every page of their website, their print materials, and signage; rewrite the text to meet corporate requests (verbatim!); remove your name from every photo of your products that depicts the use of our products; and lengthening our already very comprehensive disclaimers to include every detail of their verbiage, including statements that “we do not sell original equipment manufacturing” and that we are “in no way affiliated, authorized, or connected with” the corporation in question . I made sure these changes were made to each of our 90+ web pages and countless other marketing elements!
Once this work was completed, our attorney informed us that our new filings had passed scrutiny with the corporate attorney and their clients, satisfying all alleged violations, and terminating any further action at this time.
Since we had never mentioned the term OEM or original equipment manufacturing anywhere in our material before, I advised my client that repeated use of such terms on every page of our website would increase the likelihood that Google searches would now include our pages in response to those search terms, plus our excellent ranking for aftermarket searches, open up a new market for knowledge and potential sales. It appears that the corporation’s complaints were in fact helping my client while simultaneously shooting themselves in the foot, so to speak!
With this knowledge, my client celebrated not only the relief of legal righteousness but triumph in defeat! Okay, you may have paid your trademark attorney handsomely for delivering my messages to corporate counsel, and you paid me for all my work to correct your alleged infringements, in the end you benefited greatly from a better brand, legal strength, and the prospects for higher profits. to come, not only from its global consumer market, but also from the now-ingratiated corporation that probably feels victory is theirs alone. Who knew cease and desist could translate to win-win?
