Editor’s note: Below is an excerpt from a speech given on June 9 by Joseph R. Dreitler, a partner of Jones Day, at the annual meeting of the International Collegiate Licensing Association
By Joseph R. Dreitler, Esq.*
How aggressive do you want to be against someone you think is misusing or ripping off your property? Are there any downsides to being too aggressive?
Years ago I learned to never write a protest letter or cease and desist letter unless my client was ready to engage in litigation, and I felt comfortable seeing the letter in the New York Times. It was a great piece of advice for a lot of reasons.
For me, there is an issue of credibility. If my client is not willing to sue a third party who does not comply, I am not going to make such a threat. After 26 years in this business, if I write you a letter saying that I will sue you if you don’t comply, I will. It’s that simple and other lawyers know that.
In the good old days — and to some extent still today — people sometimes write cease and desist letters threatening to sue without any intention of doing so.
That’s foolish and ill advised. If you haven’t gotten approval from your client to file a lawsuit, why are you threatening it? By the time you send such a letter you should have gone through a complete analysis of your case — the facts, the law and if you do sue, what defenses will the third party raise? What are your odds of success? What is the best scenario and what is the worst? Does your client understand that?
Of course, threatening to sue someone and not following through is harmful to your trademarks. It is evidence — in your file — that you believed someone was infringing upon your trademark rights, but you ultimately took no action. It’s way worse than doing nothing.
More than that, you may still wind up in a lawsuit miles away from your home. In the last 10-15 years, when someone writes my client a letter that threatens to sue them, I have one thought — do we file a Declaratory Judgment action in our home town. Why? If someone in New York writes a client in Ohio a letter threatening to sue them that is serious business. My client will have to hire lawyers in New York, travel back and forth to New York and maybe face a jury in New York. The costs to my client will be staggering — but what if I can hit first and file a Declaratory Judgment against the New York company in Ohio? Then the New York company will have all of those things and costs going against it — in Ohio.
If you don’t view this as a possible outcome when you write a protest letter — you should. Remember a few years back when lawyers for the University of Michigan wrote a letter to a man in Columbus, Ohio who was selling t-shirts, golf balls, etc. bearing the words “Beat Michigan” in scarlet letters. The man in Columbus who received it had a next door neighbor/lawyer who thought that would be an interesting way to get some publicity — and he filed a Declaratory Judgment action against the University of Michigan in federal court in Columbus, Ohio! The case settled as you might expect and not on terribly favorable terms.
*Joe Dreitler is a partner at Jones Day. Based in Columbus, Ohio. He has 25 years of experience in global trademark clearance, brand development, prosecution and portfolio management, advertising review, and client counseling for consumer goods corporations.
