What To Do If You Get a Cease & Desist Letter: Have a Cup of Tea.

A few years ago, I got one of those emails. A pair of business women who claimed to own the registered trademark on the word “mompreneur” told me that I must stop using that term in my Chronicles of a Mompreneur site (the name of my first blog and coaching business), or they would pursue legal action.

I don’t think they realized that I’m a lawyer. ;)

A Cease and Desist letter is a somewhat-formal notice to you from someone who wants you to stop doing something, because they say it violates their rights or ownership.

Lots of small business owners and bloggers receive such emails and letters, about alleged trademark or copyright infringement, or claiming defamation, slander, or interference with contract, from what they said on their website. Most notices cite various scary sounding legal terms to squash your behavior and make you stop doing that which threatens them.

But when I got that letter, I didn’t stop what I was doing.

Being a lawyer, I was entertained by the mompreneurs’ email, and wrote back a well-researched letter describing specific factual and legal basis for how their trademark was unenforceable because it had become generic-ized.

I never heard from them again.

But since most of you aren’t lawyers, and you don’t find these kinds of letters to be amusing, here’s what I recommend you do when you get a letter like this.

Step 1. Have a cup of tea.

Or some chocolate. Or go for a walk. Or do whatever helps to chill you out and keep you from posting something on twitter or flipping out or firing off an angry email in response or writing a blog post about how they are big jerks or giving up the thing you have a right to.

This is not an emergency. You are not being arrested by federal marshals or being evicted by the county sheriff or having your house searched via a warrant from the FBI.

You have time to research, seek advice, and respond to this in an appropriate way.

Yes, you do need to do something (it’s rare that it’s a good idea to ignore it) but not in the next five minutes.

You’re okay.

Step 2. Shhhhh.

Don’t post about it on Facebook or Twitter.

Anything you say on Facebook can and will be used against you in a court of law.

Don’t take a screen shot of the letter and post it on your blog or Instagram. Don’t post a comment on their latest blog post about how they suck. Don’t take it public. Yet.

Don’t get me wrong. It may be that the PR response is going to be your strategy. But if taking this public is going to be your choice, it needs to be after well-reasoned, logical consideration, and after you have considered advice from counsel and your other business advisors. Anything you say now could be used as evidence against you later – and, frankly, may piss off the other side so much they won’t go away quietly or settle or be reasonable about dealing with you.

Pick your battles. Don’t fire the first shot until you are ready.

Step 3. Don’t hit delete.

Save all the documents and evidence and communications to/from this person or business. Both in case you need it for a lawsuit, and also because you need it to evaluate the situation and discuss it with your advisors.

I keep the emails and letters from these situations indefinitely in a legal file – separate from my other files both to keep it safe, and to keep it from energetically contaminating the rest of my work.

And … when I say “don’t hit delete” I also mean – don’t just ignore it.

Yeah, they may just go away … or they may come back nine months later and serve you with a complaint to drag you into court. Better to deal with it now rather than later.

Step 4. Consider the legal issues, and talk to your attorney.

In a perfect world, everyone would have access to an attorney. You would just send them the email, discuss a strategy, and let them handle it. But I get that many of you don’t have an attorney on hand – especially one with intellectual property (copyright, trademark, patent) and online business experience.

But you can still do your own research on the legalities, via internet research (such as the Chilling Effects site, a project of the Electronic Frontier Foundation and a few law schools) and/or legal self-help books such as those published by Nolo.

Know the legal issues and your rights before you make a decision.

Step 5. Consider the business issues, and talk to your business advisors.

This is something that many lawyers forget. Your strategy isn’t just based on legalities – it’s first and foremost a business decision.

This is your business and your money and your life.

It may be that the “right legal decision” is to file an action against them before they can sue you, or to quietly respond to their letter stating your position and asking for a meeting to negotiate, or even to drop your behavior/tag line/name and go away quietly into the night.

But that doesn’t mean it’s the right business decision.

You have other considerations, including the financial and reputation cost of you changing your behavior, the effect of this dispute on the mission of your business and your life, the time / money / energy cost of fighting this fight, and, frankly, your mental health.

You may choose to do something that your lawyer things is nuts, because it is in congruence with who you really are.

Even in legal disputes, you can still strive to Live Your Truth.

Warning: while I do think you should discuss such issues with your business advisors (coaches, consultants), what you tell them isn’t protected by the attorney-client privilege (the secret, private, confidential communications with your lawyer that can’t be used as evidence in a court of law). So if you tell your coach what your attorney told you – that privileged communication may be now admissible in court. Oy!  Make sure you discuss this with your lawyer to find out what you can and cannot say, and to whom.

Step 6. Take calculated action.

There are many strategies you could use.

You could reply directly to the other side. You may ask to open negotiations to settle the dispute, deny their claims with no explanation, or deny their claims with a long explanation.

You could have your attorney reply to the other side. This obviously sends a different message, since now lawyers are involved (with their legal complexities and attorney’s fees), which tends to up the stakes. Sometimes that helps to scare them away. Sometimes it just gets them to call in their lawyers that much sooner.

You could file a lawsuit against them before they have a chance to file theirs. This can be helpful, if the lawsuit is coming for sure (and you plan to fight it), and you want to pick where it will be located (you’d rather have it local to you than local to them).

You could counterattack. It may be that they are in a weak position with their own intellectual property or questionable business behavior.  You can write to them with your own cease & desist demands, file a suit against them for your own claims, try to get their website taken down or somehow go after one of their assets, or bring in a governmental agency to regulate their behavior. This definitely will escalate the situation (and you need to be careful that you’re ready to fight this fight), but if it’s important to you, sometimes a counterattack is the last thing they are expecting, and it will completely change the power dynamic (such as when Facebook asserted their patents against Yahoo, after Yahoo first sued them).

You could take it public. Post the letter on your website. Contact the press. Start a discussion on social media. Write a scathing blog post explaining your position. Pull an Oatmeal and raise $220,024 for charity and send their lawyer a picture of the money and a hilarious/offensive cartoon. WarningWhile this was totally awesome and worked brilliantly for him, only do this kind of public action if you have a clear understanding from your legal counsel of the risks and ramifications.

You could decide to not fight at all. Perhaps the word you are using is not important to you. Perhaps you are going in another direction anyway. Perhaps you agree with their position. In that case, you may choose to not fight about it, and just do what they demand. Some fights are not worth it.

Step 7. Evaluate what you could have done differently.

Sometimes we get these letters because we didn’t do the right research or have the right policy in the beginning. Perhaps you didn’t do a search on the words you are using in your tag line. You may need to put procedures in place to reduce the number of these letters that you get in the future.

But remember – the bigger you get – in fame, fortune, or energy – the more likely people will come after you.

The secret is to know what to do and whom to call when the letter comes in.

And, to drink lots of tea.

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Comments

  1. This makes me happy. Unlike the crazy world of sync licensing for music and videos. I’d love to see you tackle that beastly mess. :-)

    1. ElizabethPW says:

      Ah yes, some of that’s a logistical problem due to the big corporations who handle the stuff, and less of a true legal problem. Sigh.

  2. reese says:

    Thank you for this! So detailed, specific, and balanced. Anyone ever tell you you’d make a great lawyer? ;)

    1. ElizabethPW says:

      ;) Thanks Reese. Sometimes I forget! 

  3. kenti says:

    I am from Asia and got a C&D from a USA lawyer about my site.What should i do?

    1. ElizabethPW says:

      I obviously am not your attorney and can’t give specific legal advice in blog comments, but the above steps still apply, even if you are in another country. Of course, since you are not in the USA, there are a few additional considerations, including whether people in the USA can access your site, whether you sell products/services or ads in the USA, and whether you have any assets in the USA, and other connections you have to the USA, as well as the treaties between the USA and your country.

  4. [...] What To Do If You Get a Cease & Desist Letter: Have a Cup of Tea. (elizabethpottsweinstein.com) [...]

  5. Being on the other side as a trademark owner and lawyer, too many people ignore the letter thinking you will go away. Or alternatively, they become their own lawyers and read what they perceive to be the law. Didn’t you know everything on the internet is true? It is very frustrating. Personally, I wish they would talk to trademark lawyer when they get a letter or email. It would save everyone a lot of heartache and money. Do you think Nolo is a good alternative for someone who doesn’t really know anyone to call?

    1. ElizabethPW says:

      Yes in a perfect world, it would be great if everyone had an attorney they could talk to, to handle these situations. One of the issues is that many people either don’t know an attorney, or honestly can’t afford to pay an hourly fee to reply to an email (especially if this isn’t a business for them – it’s just a personal blog that’s being accused). I suspect that Nolo is better than just doing searches on the internet for random information – at least a lawyer was involved in the writing of a Nolo book!

      1. What do you think about the Rocket Lawyer as an alternative?

  6. Andrea says:

    Hi Elizabeth! I just found your article because I am considering using “Mompreneur” as part of a new business venture. Would it be wise to contact the two gals and ask their permission to use the word? Or, as you say, it is becoming a more generic term and I don’t really have to worry about it? Thanks!

    1. ElizabethPW says:

      Andrea – I don’t know if they are licensing out use of the Mompreneur word or not – it would have been a smart thing to do (and can be easier than trying to make everyone, including Entrepreneur.com, stop using the word all together) but I suspect they didn’t try to do that. The tone of their email to me was very “stop using the word!” and not “let’s come to an agreement.”

      I just googled “mompreneur” – and it even has a wikipedia page now (http://en.wikipedia.org/wiki/Mompreneur ), which does not mention them. They would have major problems trying to defend it in a lawsuit.

      I’m not going to give you legal advice about it … but if I was going to use the word Mompreneur in my business again, I would just go ahead and use it since I doubt they would give permission anyway – but of course I would find it entertaining to deal with a lawsuit from them. :)