When customers need to create marketing tools for their business that include branding, advertisements, brochures, direct correspondence, websites, banners and other highly visible digital and print communications, they are often oblivious and sometimes dismissive about the strict laws that protect copyright and trademark infringement. However, if the record owner discovers a rights or mark infringement, he or she may assign his attorney to draft a “cease and desist” letter which usually immediately panics the recipient within just days to respond.
Such messages serve to notify the alleged offender that a lawsuit may follow if the infringing activity continues and that “damages” can be determined by the amount of revenue/profits generated as a result of that activity.
As I’m in the thick of it as the creator of the above marketing items, my clients are sharing these notifications with me in hopes that I can somehow help them out of trouble. Equally shocked by news like this that since I have never knowingly engaged in any kind of infringing activity, my clients were first informed that I am not an attorney and therefore I cannot legitimately inform them of their legal rights or the repercussions of such a letter. And since working with my clients is largely a team effort, involving instructions, guidelines, and eventual approval by my clients before proceeding to print or publish any final marketing efforts for them, my astonishment upon receiving such a letter cannot be hidden. I share my past experiences and suggestions on the best way forward.
On such a recent occasion, my client decided after much anxiety and disbelief, that the best course of action was to consult a trademark attorney to represent the experts. Although I often write letters to clients to successfully support their legal position, I could not discuss the virtues of this decision due to an important, undeniable fact. Although my client and I are both sole proprietors, the client behind the cease-and-desist letter was a giant of multinational corporations with very deep pockets using a national law firm with offices in Manhattan.
This didn’t surprise me because the work I do for my clients has strong marketing power, with very attractive graphics and equally compelling messages, which has made them top Google rankings resulting in excellent sales and an unbelievable bad reputation. No wonder such a large company fears the risk of competition from my clients, both of whom are selling to the same market. What was perplexing about this situation is that my client’s marketing is very supportive of the company in question because my client’s items are aimed at improving this company’s products. Without the company’s products, there would be no market for my customer to serve.
After more than a decade working together, my client will be the first to admit that my marketing efforts are largely responsible for his rise to fame which includes, ironically, sales to divisional units in the same company. Many of these corporate units have recognized the value of my client’s products to embellish their brand as a way to improve their sales, not deter them. But it seems that members of the corporate elite at the head of this company’s Asian headquarters are worried that my client is trying to keep business away from them, clearly a misunderstanding on their part.
What is the nature of the letter of suspension and cessation? The company’s lawyer identified a number of alleged violations:
1. Using a pattern to identify their products was not their logo but close enough to cause confusion in the market.
2. No clear distinction between our products and theirs, the difference being aftermarket vs. OEM, respectively.
3. A number of conditions about the text size used in this company’s name (too large!), the text size used in the disclaimer information (too small!) and the use of the company’s name within their own product images that ours can use. (Do we detect envy here?)
4. The use of the company name on our products, which is a false assumption the company has made based on the use of their names in their own products in some of our photos. Note that the company’s attorney made it clear that we do not infringe any rights by using their name or offering their products to sell our merchandise designed and manufactured to complement their products and accessories. This is completely legal. What they were protesting against was our alleged “unfair business practices” that might have been taking away business from them.
At my client’s request, I submitted to his lawyers extensive research that I had done in support of my client that showed similar instances of alleged wrongful citations; Examples of disclaimer text size used on countless other sites, including my company’s website (which is much smaller than that used on my client’s website!); Evidence that none of our products display the company logo or any mirror image of it. These examples were sent to the company’s attorney with a judgment or two from my client’s attorney.
In the meantime, allowing lawyers to speak to each other in their own language on their own schedule has given us additional time to implement any necessary changes. Since my client has given me the liberty to deal with all complaints as I have determined necessary, I have decided that compliance will be the best way to reduce any further action that may involve more than a decade’s worth of annual revenue for my client. Although knowing that my client felt 100% justified in using the company name in the gentle way we had done thus far, and was annoyed by having to make so many changes without clear gain, I decided that overall marketing required a redesign that could satisfy the design. The company with raising my client’s brand to a new level of excellence. In essence, why not take advantage of a seemingly dangerous situation to turn it into a positive opportunity for growth and profit?
Fortunately, my client had no problem asserting that their products are truly aftermarket in nature (not that OEM or OEM) because OEM products are often seen as expensive and sometimes of poor quality in comparison and aftermarket products. My customer’s sale is often searched for as a better OEM alternative at a better price! Furthermore, replacing the company name with my client’s company name was a giant step forward towards a stronger branding of my client’s business, something he was shy about doing for most of his years in business for fear of obscuring the company name on products for which he made his stuff.
So, I began the daunting task of redesigning every page of his website, his print materials and banners; Rewrite the text to comply with the companies’ requests (literally!); remove their name from each image of their product illustrating the use of our product; Extending their already comprehensive disclaimer to include every detail of their words including statements that we “do not sell OEM” and that we are “in no way affiliated with, licensed by, or associated with” the company in question. I made sure to make these changes on every single page of our 90+ web pages and countless other marketing elements!
Once this work was completed, our attorneys told us that our new presentations had passed muster with the firm’s attorneys and clients, satisfying all alleged abuses and terminating any further action in this time.
Since we have not previously mentioned the term OEM or OEM anywhere within our materials, I have informed my client that using these terms frequently on every page of our website will increase the likelihood that Google searches will now list our pages in response to terms This research, in addition to our excellent ranking of aftermarket searches, opens up a new market for potential sales and awareness. Apparently the company’s complaints were actually helping my clients while shooting themselves in the foot at the same time, so to speak!
With this knowledge, my client celebrated not only the comfort of legal rectitude but victory in defeat! He certainly paid his trademark attorney generously for getting my letters to the firm’s attorney, paid me for all my work to correct his supposed wrongdoing, and ultimately benefited greatly through brand improvement, legal consistency, and greater profit potential to come, not just from his market Consumerism around the world, but also from the startup now that perhaps feels that victory was theirs alone. Who knew stopping and stopping could translate to a win for everyone?