A Trademark Question

[OLM]

Hi All,

Newbie here and have been reading with interest the threads in
this section and wondered as you're more knowledgable in this
area whether you could offer some advice on some issues i'm
having:

Ok I have a few domains and bought one of them about two years
ago - .com & .co.uk. Since that time I have been running a site that's
not been setting the world alight but brings in a small amount
a month.

This weekend I received a C & D notice from a large law firm claiming
breach of trademark, passing off, domain registered in bad faith etc.
amongst other things.

Their clients are a large firm and they have given me 14 days to
comply i.e. hand over the domains, change the name and sign a lengthy
undertaking that I will not breach their trademark or try to pass my site
off as part of theirs. (If I accept they will not take it further)

Now I have never tried to pass anything off, my logo is nothing like theirs,
the site's not like theirs, their registered trademark consists of two generic
terms and mine adds another term so as an example:

Theirs:

gunuser .com

Mine:

auctiongunuser .com

They allow people to offer things for sale and mine pulls sales content in
from a different site - but granted it's in the same field.

I can understand issues on a made up name say ebay for example but gun
& user I would have thought would have been very generic so thought I was
ok. Anyway my assumption was wrong I take it and I certainly don't have
the fighting funds that this company has and reading more about this I
would probably lose anyway.

So I guess I am going to have to hand over the domains & comply etc.

My question is this though - I want to keep my site running and will change
the name - do you think there would be issues if I changed it for example
to auctionpistoluser.com i.e. they don't have "pistol" as a registered
trademark. Again the above names are just examples.

Any thoughts / advice would be appreciated.

Thanks

Steve

 

[Dale Hubbard]

They are bulshitting you. There is no TESS on "gunuser". Hold fast. Also, don't post unregistered domains that you might use PM me if you're in a panic.

 

[OLM]

No honestly they are just examples - the best ones I could think
of at this time of night lol

Thanks for the reply!!

Cheers

Steve

 

[Marketing Guru]

Many companies have legal staff that try to justify their keep by sending out troves of C&Ds that they never act upon, nor really have any claim to.

I received a C&D for one domain about 1.5 years ago that I ignored and haven't heard from since.

I will use the same made-up sample to explain:
Theirs: GunsGroup.com
Mine: Gun.de

Their generic term is trademarked and defendable. But mine was significantly different that I did not feel a need to address it. Although my lawyer since said that I should have responded to it to enforce my own IP. And that I may do this yet, but haven't yet out of concern of 'stirring the giant' and causing more legal fees. And I don't think my generic should be anyones IP anyway.

Bottom line, if its worth it, consult an IP lawyer when you get legal notices.

- Marketing Guru
This is not legal advice. Consult an attorney.

 

[Dale Hubbard]

Yes, but that's suggesting he spends money when entirely unnecessary. Let them come to him. Gunsgroup.com -v- Gun.de - useless example. Where did your lawyer indicate you were possibly in breach and on what grounds?

 

[jberryhill]

There is no TESS on "gunuser".

Even if this were the actual term, the USPTO is hardly the last word on whether someone owns an enforceable trademark right.

 

[Dale Hubbard]

I know 'TESS' isn't the term, but if anyone's been to the site they'll know what I'm talking about. Thanks for the advice.

 

[OLM]

Thanks everyone for the replies!

Their firm of Lawyers has sent over details of the Trademark registration
and what it pertains to. They mention that visitors are likely to be confused
and state that if it goes to court they will claim damages - but seriously I doubt that it would confuse anyone.

As much as I don't want to just hand over the domains for free - I think it
would be cheaper than trying to fight it. :disappointed:

Guess I better go and register another domain name!

BTW does anyone know how much it costs to register a Trademark in the
UK??

Thanks

Steve