My law firm often gets calls from companies alleging that “a Chinese company is selling their product under their trade name on Amazon” and asking us if we can send out a cease and desist letter “right away” to get the Chinese company to stop violating the calling company’s IP. Our typical answer is to say that it is seldom a good idea to just “whip out” a cease and desist letter and that 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), but they also influence what we say in those letters.
The goal being, of course, to get the Chinese company to stop shipping the infringing product to the United States and to accomplish that without our client having to incur the cost or the hassle of bringing a lawsuit.
I was reminded of all of this the other day because I was cc’ed on a couple of emails between our IP lawyer and one of our China lawyers. The IP lawyer sent an email noting that we need to first gather the relevant facts before we can send out a cease and desist letter because sending such a letter might prompt its recipient to file a lawsuit against our client, seeking a Declaratory ruling that our client does not have a 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 best position us to be able 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….