To prepare a letter of demand to protect a name you have two main tasks. In the case study used in this post, assume you claim ownership to the valuable product name and today discover a competitor using an identical or similar name. It might be for a similar business or for comparable products or services.

1. Begin with evidence of facts

Task 1: First, gather facts by listing registrations you have for any relevant trade marks, company names, domain names or business names. You’re sure to have some evidence here, maybe a product name or brand.

Task 2: Next, gather facts by listing your evidence of use of the name or brand in the course of trade.

For task 2 using the format of our Chronology of Events Form below might speed up the process.

This is the template form we’ve used for two decades and provided to clients for them to prepare the first version of their chronology of events

For task 2, the real-world challenge is to economically convince the competitor using what the law prefers – documentary evidence. Ideally there will be evidence that is substantial and of good legal quality. What’s then needed is to wrap a story around it in some chronological order.

2. Getting down to business

Without documentary evidence you’ll have very little convincing evidence supporting your claim to being the owner of an intellectual property monopoly or related legal rights.

Solid documentary evidence set out in a letter of demand helps convince competitors and their legal advisers to back off or face higher costs the further a legal dispute proceeds.

A letter of demand is the usual first way to dislodge a competitor from using an identical or similar name or other product identification. If the demand is accepted, a settlement can be reached. A letter of demand is an opportunity to assert a legal claim and thereby resolve a legal dispute without going to court. It has three parts:

  • a statement of claimed facts, ie the documentary evidence noted already
  • a statement of the applicable law relevant to those facts, and
  • a list of demands with a deadline for compliance.

Why is generating documentary evidence so hard? A common issue is insufficient record keeping, readily available records or consistent records. Not having them means there’s no legal bullets to shoot.

3. Protect brands with these 6 best practices

The six best practices below overcome the challenges. They create legal rights and documentary evidence. They can convert a poor demand letter’s bald claim to legal rights, into an evidence-grounded and solid claim to the existence of an intellectual property monopoly and related rights.

Invest in these practices and save on legal costs. They’ll put a full set of bullets in your name and product identity protection legal arsenal. Show their existence and most competitors will accept defeat without a gun fight.

  1. This listing of Batman logos can be also thought of as a repository of intellectual property. It is useful evidence for demand letters and court actions against unauthorised parties using their own Batman logo drawings as product trade marks, that might be different, but legally infringing nonetheless

    Contractor agreements, including intellectual property assignments with name and logo generation consultants and graphic designers.

  2. Trade mark registrations with appropriate descriptions of goods or services, or both. Avoid do-it-yourself trade mark applications unless you’ve worked previously with a trained person or professional such as a lawyer or trade mark agent.
  3. An archive or repository of evidence of use – to support claims under common law. Preferably this will be electronic as well as hardcopy where there’s a need, eg for printed product labels, posters, brochures and other marketing collateral. Put into the archive copies of advertising, PDFs of webpages, spreadsheets of historical revenue earned from the intellectual property capable of being split up as needed (eg by geography, supply channels and product types).
  4. Use intellectual property notices with the name or other product identity. This can be read as legally tagging your claim, like branding livestock. Many fail to use notices, use the wrong notices, or have inconsistent information in notices, so much so as to make the notices ineffective in the legal arena where consistency can be vital for convincing the other side, a judge or other adjudicator.
  5. Keep an intellectual property register. This pulls together into a simple summary key information on all the areas of intellectual property and if there is additional information it can reference the repository noted above.
  6. Use written employment agreements given that people create intellectual property.

A benefit of these six practices is that they avoid having to pick up implements and go to war. The war can be won virtually without any fight.

Contact us with any questions or requests.

Noric Dilanchian
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