I have been served a cease and desist letter related to this patent. I have never copied or reproduced this product at all. We make all of our coins on demand and per the specifics of our customer. I use different coins and do not sell at wholesale. My small store is located in San Diego County 75 miles from this owner's storefront. I do not sell online. Can this be labeled an infringement? Thank you, Kellie Legare

In reference to the patent: USD693727

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    Please contact an attorney. This site cannot give legal advice. You might be in serious trouble and you do not want to go through without professional and specific advice. – DonQuiKong Mar 6 '17 at 21:11
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    It is unfortunate, but you can be threatened with a law suit or sued without doing anything wrong. However, in order to fight the action will require the services of a lawyer to guide and represent you. Sometimes a simple letter from your lawyer will be enough to get the other party to stop their action. – Eric S Mar 6 '17 at 23:46

It absolutely could be infringement, which is entirely based on the design and no other factor. (i.e. your location or lack of eCommerce is irrelevant.) If a customer asks you to produce the patented design, that would be infringement.

This is an unfortunate situation, but as Maca and DonQuiKong advise, your safest route is to bite the bullet and contact a patent attorney.

The positive aspect is you are not bound by geography, and can probably find a solo practitioner who works from a home office, and thus can charge a significantly lower rate than a firm. In my experience, there are some very nice patent attorneys, and they will consult with you at no charge.

This is going to be very basic since it is a design, not a utility, patent, so it shouldn't require a lot of hours to come to grips.

But if you ignore it and there actually is infringement, it could be expensive.

  • Damages can be hard to prove, and if the violation is in the form of "one offs", they might not be extensive. But the cost of IP litigation is ruinously expensive, thus consulting with an attorney is actually cost effective. – DukeZhou Mar 9 '17 at 22:14
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    Excellent advise. If, in fact you have never produced a product that looks like the cited design patent then likely you will only need the patent lawyer to write a simple letter to the threatening party. – Eric S Mar 10 '17 at 19:41
  • @EricShain I had to hold my tongue from advising they contact the lawyer that sent the "cease and desist" and very courteously inquire about the specifics of the infringement, in order to not violate in the future, but I often work around lawyers and have some experience with the intricacies. I could easily see someone less used to that world becoming confrontational and making matters significantly worse. – DukeZhou Mar 10 '17 at 20:36

First, you should realize that this is a design patent and not a utility patent.

Did the letter describe or show any of your products? Take a good look at the design in the patent and see if it remotely looks like any medallion that you've ever manufactured. If this is not the case then save yourself some money and ignore the letter. People send cease+desist letters all the time.

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    This is quite dangerous advice, particularly to a non-professional, since you have completely omitted the risks of ignoring such a letter. Sometimes it is right to ignoring is the right course, but this can only be done after satisfying yourself of the risks of doing so. This requires professional guidance. – Maca Mar 8 '17 at 23:36
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    No: most answers and comments do a good job of explaining the situation fairly. The problem with this answer is that it doesn't discuss the risks of your suggested approach, nor does it explain the nuances of assessing infringement of design patents. The risk being that if you get it wrong, and since you've now been put on notice, you are more likely to be found to be willfully infringing, and may therefore be liable for treble damages. – Maca Mar 9 '17 at 0:37
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    @Olsonist it's not even the case that your advice here is exactly wrong. But you are advising people against hiring a professional to assess a situation that could potentially lead to losing their business and facing criminal charges (worst case). You are neither explaining at depth why and how, nor are you mentioning the risks of your approach. If your answer had 200 sentences explaining exactly what is needed to infringe a design patent, how to tell, what to check and that if one is not sure they should ask a professional, I'd upvote it and I think Maca would to. But you don't. – DonQuiKong Mar 9 '17 at 8:57
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    You are oversimplifying the situation. An example from German contract law, if you ignore a letter demanding money because you are sure you don't owe money, the other party would be legally allowed to send a court officer and make them take that money from you. Sometimes it is important to not only know the facts about the situation but also the legal implications of one's actions. What if they ignore the letter and in 2 years make a coin just like this, having forgotten about this letter already? Treble damages are possibly the worst joke of the US law system, but a dangerous one. – DonQuiKong Mar 9 '17 at 9:02
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    Another thing is, maybe it's a mistake, but if the other party doesn't get told it is and sues, you'd wish to have talked to an attorney beforehands, because it's not getting cheaper, even if you win. If your opinion is that one can go through most situations without legal advice, I respect that, but I agree only if one is well informed about the dangers and their legal obligations and is willing to eventually lose more than the original stake of money. Because trusting your abilitys on a topic others study for years is essentially gambling! – DonQuiKong Mar 9 '17 at 9:07

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