AOL harassing me for FlashInstantMessenger.com

[biznews]

AOL has been harassing us via email and mail regarding domain flashinstantmessenger.com

I have explained at length to them that flash instant messenger is a new flash based instant messenger application and it is already being further developed and commercially used by various developers.

We also registered flashim.com the same moment along with flashinstantmessenger.com to develop the flash based utility in instant messaging.

A prominent TM and Patent attorney has told me that instant messenger is used by many services and the added word flash is in the public domain and that they have no chance to win the lawsuit.

AOL is causing me unwanted duress. I am waiting to see what they are going to do. I would like to know what are your thoughts on this. Should I sue them for damages? Also if I can find a TM attorney here in the forum who can help me deal with this as a special case. I do not have the funds to encounter a litigation with AOL.

Any support is appreciated.

 

[lz83ny]

Miranda Instant Messenger, Trillian Instant Messenger just to name a few. I don't think they are being harassed by AOL. Good luck!

 

[GeorgeK]

AOL's TM applications were rejected:

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75497543

"Current Status: The examining attorney's brief for the ex parte appeal of the final refusal to register applicant's mark has been mailed."

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75496386
"Current Status: The examining attorney's brief for the ex parte appeal of the final refusal to register applicant's mark has been mailed."

Tell that to the AOL attorney. arty: Ask them for the registration numbers of the marks that they claim. I did that for the folks who claimed rights in "Tax.net" years ago -- never heard from them again, lol

 

[biznews]

Thanks guys. I appreciate your thoughts a lot. I just checked that Yahoo and Microsoft both own yahooinstantmessenger.com and msninstantmessenger.com respectively. I am certain AOL doesn't have a case...

This is their email threat to me, which is posted via the link below

http://www.onsitebusiness.com/fim/fim.pdf

Chris

AOL's TM applications were rejected:

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75497543

"Current Status: The examining attorney's brief for the ex parte appeal of the final refusal to register applicant's mark has been mailed."

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75496386
"Current Status: The examining attorney's brief for the ex parte appeal of the final refusal to register applicant's mark has been mailed."

Tell that to the AOL attorney. arty: Ask them for the registration numbers of the marks that they claim. I did that for the folks who claimed rights in "Tax.net" years ago -- never heard from them again, lol

 

[GeorgeK]

You'd face a bigger risk from Macromedia, though, as I believe "Flash" *is* a registered trademark:

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75336379

 

[biznews]

Yes, that could be. But flash in instant messaging cannot be confused with the flash application. Will cross that bridge when we get there...

Cheers

You'd face a bigger risk from Macromedia, though, as I believe "Flash" *is* a registered trademark:

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75336379

 

[Dave Zan]

Should I sue them for damages? Also if I can find a TM attorney here in the forum who can help me deal with this as a special case. I do not have the funds to encounter a litigation with AOL.

Won't you need funds to sue AOL for damages if AOL sues you first and you
don't have any? :-D

But after reading that letter, they're nuts. Post it at chillingeffects.org!

You'd face a bigger risk from Macromedia, though, as I believe "Flash" *is* a registered trademark:

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75336379

Interesting info, GeorgeK. But I'm wondering if they'll be able to pull it off
based on this:

computer services, namely, providing information about web design, interactive graphics and animation, and multimedia content via a global computer network

Hmmm...interesting how they'll argue that instant messenger would fall under
any of those. Whoops, that's for the lawyers to argue about.

Not to mention "flash" is a rather common word...

 

[GeorgeK]

Almost every TM is a common word. Just used in an 'uncommon' way.

 

[jberryhill]

Incidentally, the USPTO now has a "view documents" feature under "trademarks" on the homepage by which you can view the actual papers in many pending files. Plug in the serial number, 75497543 , and you can read the Examining Attorney's brief for the specific arguments used and evidence cited.

This matter is pending before the Trademark Trial and Appeal Board. As much as you may find the Examining Attorney's brief to be persuasive, as I do, the matter has yet to be finally determined.

 

[Theo]

I found it funny that the lawyer's office is called "Arent Fox". They don't seem to be smart.

 

[Ovicide]

Incidentally, the USPTO now has a "view documents" feature under "trademarks" on the homepage by which you can view the actual papers...

Thanks for pointing out that new feature. I probably wouldn't have discovered it otherwise.

I've already used it, and will use it regularly.

 

[namedropper]

Macromedia's TM using "Flash" to cover "multimedia content via a global computer network" could apply to an instant messenger applications that sends text in combination with graphics and sound of any sort. It's not like it's a completely different fields we are talking about. They are both computer applications running over the internet to display things.

I know that's what I'd be arguing if I were their lawyers. They have to defend their trademark or risk losing it, and I can't see a way for them to just ignore this if the public starts hearing about it.

 

[namestrands]

If you are willing to take on the legal might of both AOL and Macromedia then I would ride it out, but seriously consider changing the flash part unless you could get permission from Macromedia to use their trademark in that context.

AOL are flexing their corporate muscle and they have to protect their name even though instant messenger is now saturated across most of the Internet Players. I would hope that their is more to this claim than what you have posted here.

p.s OT I am looking for a good trademark lawyer to retain in the US could you PM with any recommendations

Thanks

 

[datawan]

Any update on this I would be interested to hear the resolution on this.

 

[biznews]

I asked Steven Lieberman from aplegal and he was kind to advise me that flash instant messenger is not an infringement on instant messenger and had me respond to the attorney in the manner that they never replied to me after that.

But my site meter logs show that they frequently visit the domain to monitor it. They did that even today. Not sure why! They must also visit yahooinstantmessenger.com msninstantmessenger.com and find a reason for tm violations from their respective owners. But nooooooooo, they won't bother fighting Yahoo! & Microsoft. Will they?

If they harass me anymore, I will most likely take legal action against them. The USPTO has never granted AOL tm rights to their application. Moreover, I have also registered flashim.com simultaneously, which will prove that my registrations were based on the flash based utility of instant messaging.

And to be very honest, the courts are not always fair. It broke my heart to hear about milka.fr http://www.milka.fr/ : Here is a woman whose first name is Milka and she started her business based on her name. Kraft sued and won on the premise that their brand name was in use before Milka was even born.

Trademarks rights are not exclusive. If your business premise is not confusingly similar to the trademark rights holder and if your business is not operated on bad faith, you have full rights on your business name, especially if it is your very own name.

Years down the road, it will be hard if I name my son Microsoft to start a business under that name and get away with it. But Milka! Come on - It is a common name used by thousands.

And flash instant messenger! - Wait till the application hits online mainstream. It is a unique software utility unto itself...

 

[Theo]

I think they'd have more of case against AmericanOnline.net being sold in the Sales forum.

 

[datawan]

Another example to me biznews, that the government has overstepped its boundries once again and protected the corporate strongarm regarding the milka.fr domain...

Im glad things panned out for you, look forward to seeing your application buying out aol one day