To prepare a letter of demand to protect a name you have two main tasks. Assume you claim ownership to the 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.
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 even if it is 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. This task is difficult for many businesses.
For task 2, the real world challenge is to economically convince the competitor using what the law requires – documentary evidence. If this evidence is already gathered and good your company or its in-house counsel can send the letter and it a bullseye. Sometimes it is best to leave the shooting to a private law firm.
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.
You, your in-house counsel or private lawyers are preparing a letter of demand as the usual first way to dislodge the competitor from using the identical or similar name. If the demand is accepted, a settlement will be reached with some favourable results for you.
You know 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 legal consequences arising from those facts, and
- based on all that, a list of demands with a deadline for compliance.
Why is generating documentary evidence so hard? A common theme is lack of record keeping, readily available records or consistent records. Simply stated, there’s often just a lack of legal bullets to shoot with.
Protect brands – 6 best practices
The six best practices below overcome these challenges. They create legal rights and documentary evidence. They can convert a bald claim to legal rights into a solid claim to intellectual property monopoly and related rights.
Invest in these practices and save tens or hundreds of thousands of dollars on legal fees in litigation. They’ll put a full set of bullets in your gun for name protection. Show them and most competitors will accept defeat without a gun fight.
- Contractor agreements, including intellectual property assignments with name and logo generation consultants and graphic designers.
- Trade mark registration in the name, with an appropriate description of goods/services. 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.
- Maintain 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. It would contain copies of advertising, PDFs of webpages, spreadsheets of revenue capable of being split up as needed (eg by geography, channels and product types).
- Use intellectual property notices with the name to tag your claim. Many fail to use notices, use the wrong notices, or vary key information in the notices so much as to make them ineffective in the legal arena.
- 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.
- Use written employment agreements given that people create intellectual property.
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