QUESTION: Cease and desist letter, what can we do with the merchandise? We create and sell card games. Recently we received a cease and desist letter for trademark infringement on one of the games. We did stop selling the item, but what can be done with the merchandise on hand. Can we donate them to Children's hospitals, or after school programs without risking potential issues in the future? Or do they have to remain in storage?
ANSWER: Typically, part of the settlement agreement to stop selling infringing goods includes “what can the infringer do with the remaining goods”. Simply because you stopped selling the infringing goods does not mean you have the right to “dispose” of the remaining goods.