I,
On behalf of the Company, I further certify that:
- 1. In the marketing, distribution, or identification of products or services of the Company or its affiliates, the Company was using the following trademarks or logos:
(collectively, the "Infringing Marks"). - 2. The Company will immediately stop using the Infringing Marks and any other marks confusingly similar to marks used, owned, or registered by
(the "TM Holder") or its affiliates. In particular, the Company will stop using the Infringing Marks to market, distribute, or identify . - 3. The Company will stop, and not allow to be created or released into the public, any additional marketing, sale, or distribution of products or services of the Company or its affiliates that includes the Infringing Marks, including any Company use of the Infringing Marks on the internet, email blasts, print, radio, television, flyers, posters, banner, signs, merchandise, or apparel.
- 4. The Company has destroyed all copies of the Infringing Marks in its possession, whether those copies were in printed form, office files, archives, or electronic format on computers or other electronic devices. The undersigned has signed this certificate on the date written below.
Date: _________________________ |
By: ______________________________________________ Name: Title: |
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Certification of cease and desist agreement: How-to guide
Your trademark is your marketplace signature, an indicator that your company produced the items for sale, and a promise that those items will meet the quality standards you’ve worked to establish.
Suppose another company or individual attaches a similar mark to their goods or services. In that case, it’s akin to a forgery, using your "signature" to obtain customers or signal your approval of those products. This forgery can cause an immediate decrease in your sales by siphoning purchasers to a different company’s merchandise. It can also cause a long-run decrease as well, as the power of your brand can get diluted by association with lesser quality goods.
By law, you must challenge any infringement on your trademark and intellectual property to hold onto the protections you’ve earned. To keep your trademark, you have to defend it. Sending a formal cease and desist letter is a good first step. It shows that you’re monitoring your trademarks and protecting your brand. But how can you be sure that the company agrees with you and that the trademark infringement will stop? Although some organizations may offer verbal promises, a formal written confirmation from the company can provide assurance of its intent. That’s where a certification of cease and desist document comes in. It is designed to assure you that the competitor company has stopped using your trademark, and this is their written acknowledgment of it.
Essential checklist items while asking for a certification of cease and desist
Criteria to pursue legal action for trademark infringement
Even if your trademark is registered with your state or with the United States Patent & Trademark Office (“USPTO”), you don’t have the rights to that mark until you have actually used it in your business.
Examine the mark you think is infringing on your trademark. It must be both confusingly similar to yours and used in a related product area. For example, you may own “John’s Body Works” for your car company, but you would have a hard time proving that a beauty salon with the same name would confuse your customers.
Before you start this process, make sure you are the actual trademark owner and ask whether:
- Do you have priority rights in this mark?
- Did you start using it in connection with your business before the other company did?
- Confirm that you’re not the infringing party before leveling any legal claim and accusations.
If your trademark is not registered, send a sample of your mark with the certification. If your trademark is registered, attach a copy of your USPTO registration.
Contact the infringing company before providing the certification. Try to agree in advance on whom in their organization will complete and sign it. Ensure that a high-level officer (i.e., someone with authority to bind the company) is signing on their behalf.
Proper documentation and record-keeping
All correspondence with infringing companies and individuals should be kept in an organized and accessible file. If the trademark infringement continues, this will show your vigilant defense of your trademark and provide evidence that the other company intentionally infringed after receiving notice.
Importance of prompt actions
Be prepared to take additional steps if the company or recipient ignores your notice, doesn’t respond, and/or continues to use the infringing materials. Failure to act within a certain time period against the infringing party is known as “acquiescence,” and it could lead to the limitation or termination of your trademark rights.
Trademark infringement monitoring
Once you receive the signed certification, monitor the company, its website, and its advertisements to see if it is, in fact, complying with that document. Make and keep copies of any infringing documents that you find.
Additional infringing action: Sending a second cease and desist letter
If trademark or copyright infringement continues or recurs, consider sending a second cease and desist letter with language referencing the signed certificate and the additional infringing actions.
Take legal help for infringement cases
At this point, it might be a good idea to meet with an experienced attorney dealing with trademark and intellectual property infringement to prevent further injury to your trademark and to obtain compensation for the damage that may have already been done.
Important sections of a certification of cease and desist document
The following instructions will help you understand the terms of your certification of cease and desist.
Details of the infringing party
In the certification, you need to provide the name of the person at the infringing company who has agreed to sign. Also add their title or designation in the company. For example, president, chief executive officer, or general counsel.
Add the information of the infringing company, including its registered legal name with the state. For example, LegalZoom's legal name is “LegalZoom.com, Inc.” If the company has a public name (or trade name), add that as well.
Information on the infringement
Here, you have to give a detailed list of how the infringing company has been using your intellectual property and trademarks. For example, the company might be using your mark on their website to promote or drive traffic to their site with your trademark. Such online infringement should also be detailed here.
Details on the company owning the mark
In the certification, provide all the information related to the company that owns the trademark. Include details like how long you have been using the mark, whether it is registered with the USPTO, and the date you received the official mark.
Frequently asked questions
What's a certification of cease and desist?
You've created a brand name and built a reputation for quality and service. Unfortunately, business rivals may want to cash in on your hard work using a brand name or symbol that looks like yours. This needs to be clarified for your customers. Protect your trademark from infringement with a certification of cease and desist. A certification is a written confirmation from the infringing party that they have stopped using your trademark in their business.
What details are required to complete your certification of cease and desist?
To complete your certification of cease and desist, the information you'll need to have are:
- Who it's going to: Make sure to have the full legal name of the infringing company and the name and title of the person at that company who will be signing the certification.
- Infringement details: List all the ways the company was infringing your trademark. Be sure to describe how the company was using your mark. For example, was your mark being used to sell clothing? Or was it being used to advertise the company?
