When clients need to create marketing tools for their businesses, including trademarks, advertising, brochures, direct mail, websites, signs, and other highly visible print and digital communications, they often ignore and sometimes disregard the strict laws that protect copyrights and trademarks against infringement. . However, if the owner of the record detects a copyright or trademark violation, they can task their lawyer with drafting a “cease and desist” letter which usually 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 revenue/profit that was generated as a result of such activity.
Since I am in the middle of this as the creator of the marketing items mentioned above, my clients share such ads with me in the hope that I can somehow help them out of trouble. Equally surprised by such news, as I never intentionally engage in any type of infringement 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 I proceed to print or publish any final marketing efforts for them, my surprise at receiving such a letter cannot be hidden. 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 because of one undeniably important fact. Although my client and I are individual business owners, the client behind the cease and desist letter was a deep-pocketed multinational corporate giant using 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 messages, which drive them to the top of Google rankings, resulting in stellar sales. and 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 items 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 their 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 in garnishing their brand as a way to enhance their own sales, not deter them. But it seems that the members of the corporate elite running the Asian headquarters of this company are worried that my client will try to take their business away, 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 font to identify your products that was not your logo but was close enough to cause confusion in the marketplace.
2. Failure to obviously differentiate our products from theirs, the difference is aftermarket vs. original equipment manufacturing, respectively.
3. A number of provisions regarding the size of the text used in this corporation’s name (too big!), the size of the text used in our disclaimer information (too small!), and the use of your corporate name within your own product photos in which our products may 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 their name on their own products within some of our photos. Please note that the corporate attorney clarified that we were not infringing 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 completely legal. What they were protesting were our alleged “unfair trade practices” that were possibly taking away business 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 size of the disclaimer text 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’s 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 the 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 any complaints as I deemed necessary, I decided that compliance would be the best route to reduce any further action that could take over 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 upset at having to make so many changes for no apparent gain, I decided that total 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 into a positive growth and profit opportunity?
Fortunately, my client had no problem emphasizing that their products are truly aftermarket (i.e., not OEM or Original Equipment Manufacture) because OEM products are frequently perceived as overpriced and sometimes inferior in quality by comparison. and my client’s aftermarket products are often sought after as a better alternative to OEM at a better price. Also, replacing the corporate name with my client’s company name was a big step toward a stronger brand for my client’s business, something he had been shy about doing for most of his years in business for fear to overshadow the corporate name on the products for which their items are manufactured.
So, I began the arduous task of redesigning every page of their website, their print materials, and signage; rewrite text to meet corporate requests (textually!); remove your name from each photo of your products that shows the use of our products; and lengthening our already very comprehensive disclaimers to include every detail of your verbiage, including statements that we “do not sell original equipment manufacturing” and that we are “in no way affiliated with, authorized by, or connected with” the corporation in question. . I made sure these changes were made to every one of our 90+ web pages and countless other marketing items!
Once this work was complete, we were informed by our attorney 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 informed my client that using such terms repeatedly 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 rankings for aftermarket searches, open up a whole 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 relief from legal rectitude but triumph in defeat! Granted, you may have paid your trademark attorney handsomely to deliver my messages to the corporate attorney, and you paid me for all my work to fix your alleged infringements, in the end you benefited greatly from better branding, legal strength, and the prospects for higher earnings. 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 that cease and desist could be translated as win-win?