18 Jun 2013 at 12:05 PM

Fabulosity, Intellectual Property, New Jersey, Trademarks

A Great Response to a Cease and Desist Letter

By Staci Zaretsky

In case you don’t know by now, many lawyers — maybe even you — enjoy writing cease and desist letters in a foreign language called legalese. This exotic tongue often contains Latin phrases, SAT vocabulary words, and various here-and-there words (e.g., herein, heretofore, hereinafter, hereunder, thereof, thereto, therewith, thereunder, therefor, thereon, and therefrom).
A person unfamiliar with legalese may become frightened and run to another attorney for help in deciphering this mystical language of lawyerly legend. The lawyer who has been tasked with translating legalese to English may then become annoyed, and issue a scathingly funny letter in return.
For an example of how to write a great response to a cease and desist letter, keep reading…

Jake Freivald, a resident of West Orange, New Jersey who once ran for town council and lost, started westorange.info, a rudimentary website that provides basic information about the town, like “places to talk [online]” and “places to get news.” It doesn’t look like a site that’s sponsored by West Orange in any way, shape, or form — unless the town hired middle schoolers to create its online presence.
That said, not long after he started the site, Freivald received a demand letter from Richard D. Trenk, the township attorney for West Orange (and an alum of my alma mater). Here is Trenk’s cease and desist letter (retyped online by Freivald, who added sics where necessary to indicate errors in the original):

Dear Mr. Freivald:
I am the Township Attorney for the Township of West Orange (“Township”). It has come to our attention that, on or about May 13, 2013, you registered and began to use the domain name “westorange.info” (the “Info Domain”). The Township interprets this action as an effort by you to confuse and conflate the Township’s official domain name and Web site with the Info Domain that you maintain.
The use of the Township’s name is unauthorized and is likely to cause confustion [sic], mistake or to deceive the public and may be a violation of the Township’s federally protected rights. The Info Domain falsely creates the impression that the Township is associated or affiliated with the Info Domain. At a minimum, this action has been taken with constructive knowledge of the Township’s name and Web site, and constitutes bad faith use of the Info Domain.
Accordingly, the Township demands that you cease and desist from use, ownership and maintenance of the Info Domain. The Township further demands that, within ten (10) days, the Info Domain be withdrawn from the current registrar, and that you cease all current and future use of the Info Domain, or anything else confusingly similar thereto.
The Township reserves all rights and remedies.
Please be guided accordingly.
Very truly yours,
Richard D. Trenk, Township Attorney

We hope you didn’t get “confusted” by that. Freivald’s lawyer, Stephen B. Kaplitt — formerly of Weil Gotshal, Cadwalader, the U.S. State Department, and Beacon Financial — wasn’t, and it looks like he was “guided accordingly” (don’t you hate that phrase?) when he penned this fantastic response (for a larger view, click here):

Stephen Kaplitt: Cease and Desist Response Letter