Cease and desist letter on a name with two independent trademarks

[stevo]

I recently received a cease and desist letter on a .us name. In checking their claim of trademark infringement, there is not only their trademark, but another trademark from a separate business for the exact same word/phrase. The name was parked and did display competing ads. The name is an "i" name with a very generic word following the "i". They own the .com. My .us name has had roughly 100 visitors in the past 6 months with zero revenue. Not really using their mark to an advantage monetarily. I do like the name, but don't like being pushed unnecessarily.
If someone is familiar with similar circumstances, please advise. There are no legal proceedings, so far a just letter. They do ask for $1500 for damages or whatever. If you believe you can offer advice, PM me and I will tell you the name. Thanks.

 

[Onward]

Steve, PM me the name and any ither info you can & I will tell you what I think.

 

[Gerry]

Sounds like strong arming. Already seek money for damages? On what authority?

IF parked make sure there is absolutely nothing relating to their product or service.

Better yet, create a mini site and sell stuff like miniature horses or bridal gowns...totally far from whatever they claim is an infringement.

Meanwhile, copyright the contents of your site (simply by adding copyright ©).

Most importantly, add ™ symbol to your site. Yes, you can use the TM symbol but not the ® symbol.


Here is some useful information for all from a blog of a patent and trademark attorney:

Use the ™ or ® symbol to notify competitors of your trademarks

The ™ symbol may be used whenever a company wants to indicate any mark that they consider to be a trademark. A company does not need to file any paperwork or receive permission to use the ™ symbol. Use of the ™ symbol can put your competition on notice that you consider a mark your trademark.

The ® symbol may ONLY be used AFTER the US Government grants a Federal registration certificate. The ® symbol may not be used while the Federal application is pending. Additionally, the ® symbol may only be used in connection with the goods and services listed on the registration certificate.

By always using the correct trademark symbol whenever you use your trademark, your competitors should be put on notice of your trademark, which lets them respect your intellectual property. Likewise, you can prevent your customers from becoming confused by always respecting the trademarks of others, whether they use the ® or ™ symbol.

---------- Post added at 01:30 PM ---------- Previous post was at 01:29 PM ----------

Disclaimer: I am not an attorney. But I listen to and usually follow the advice of attorneys when it applies to their area of expertise.

 

[eeedc]

Every cease and desist letter sounds threatening. Don't take it personally.

The previous thread had a rather positive result, but I would not expect the same. I think the company was really being nice to her partly because she had a "good faith" (blogging) use for the name.
http://www.dnforum.com/f26/legal-th...service-mark-2-thread-460793.html#post2032958

The chances of them getting any damages or legal fees from you are remote unless you did something in very bad faith like register many other trademarks such as eeBay.com. Still it costs money or time at the least if you do it yourself if they do take action.

Unless it's a famous brand such as "Coke" or "Pepsi," there trademark only extends to their current line and area of business. Also, with it being mostly generic, it's a weak trademark.

If you get lucky, the company may offer you money to save on the legal fees and hassle, but don't ask for money first or it could be evidene of bad faith.

PM me the name for more.

 

[stevo]

Is anyone receiving my PM's concerning this matter? I have sent several to both onward and eeedc. I cannot view them via my "sent" messages. If either of you have not, please try to send me a pm and perhaps then I can reply with particulars.

 

[Theo]

"The name was parked and did display competing ads"

And that's why they want $1,500.

 

[Onward]

Is anyone receiving my PM's concerning this matter? I have sent several to both onward and eeedc. I cannot view them via my "sent" messages. If either of you have not, please try to send me a pm and perhaps then I can reply with particulars.

I did not get a pm (ans an FYI)...although we chatted via email as you know.

 

[eeedc]

"The name was parked and did display competing ads"

And that's why they want $1,500.

better hope that is was more-or-less unintential like when GoDaddy puts up ads on any domain name and/or the ads were targeting the generic product and not the company (which sound similar with only an i difference).

 

[Gerry]

better hope that is was more-or-less unintential like when GoDaddy puts up ads on any domain name and/or the ads were targeting the generic product and not the company (which sound similar with only an i difference).

If it was ads directly related to the TM, then it is infringement - whether unintentional or intentional. Even with google adsense, the publisher has the ability to specify keywords and to block URL's.

It will remain the responsibility of the publisher.

Even if it was parked, the owner of the domain still has the ability to choose keywords. Some services even allow the option to block keywords.

Those arguments hold little weight and merit. If you don't want to get in trouble with microsoft over iOffice then don't include keywords like MICROSOFT,OFFICE,SOFTWARE.

But, the point of someone demanding cash in a C&D, I am not sure about the legality of that. Better consult an attorney. As I mentioned, it sounds like someone trying to strong arm you but only a court and award damages. Much of this reminds me about the copyright snooping service out of denver who were sending out notices regarding copyright infringement on articles or images and seeking $6000.00 for each instance in "out of court settlement". This was found to be unenforceable and violated numerous laws.

 

[eeedc]

It's legal to ask/demand anything in a cease and desist letter, but it's hard-ball.

If they or the lawyer/law firm is not in the same state or court district as you are, chances are they are not going to find a lawyer in your state to sue you. There are usually a few more threats prior to a lawsuit, so you can usually negotiate. A lawyer will cost you money, but not having a lawyer might cost you money also.

You might want to take down the ads since you are not making any money on them and you did not realize they were competing until now.

Their trademark rights only extend to the goods and services they have the trademark for. I would guess that if you google the "I word" thousands of other people have many other uses for it - which I hope you were thinking of when you registered the name.

If you do nothing, there is a slight chance the problem will go away on it's own since they don't want to spend any money on the lawyers; there is a better chance they will respond with mean form letter number two (it's like collecting bills, they usually don't go straight to court); there is a very small chance they will take you to court. You do have some obligation to dispute their claims (write back) since the courts want people to settle before suing.

You can always politely write back stating that you have a fair, noncompeting use for the name that is not covered by their trademark and will not confuse customers. If you made zero money on a PPC basis, it means no one clicked on any ads? (mostly robots if you never promoted site) and there was no harm in their trademarked field. You could also point out that their trademark is a very weak trademark, that is almost generic, which in theory they could lose if they take you to court if you want to discourge them; but kicking big dogs is risky.

 

[Cartoonz]

They can "demand" anything they like... but to enforce it, they'd have to sue.
That said, if you just give them the name, they'll be happy most likely.
Does not sound like it is a fight worth taking on to me...

 

[eeedc]

The name did not seem worth fighting over to me.

They may have you pegged as a speculator at best, a cybersquatter at worst, since there was a "this domain name may be for sale" on the parking page, so I would not expect anywhere a positive result on that other thread where large businessees sometimes pay people (using a name in good faith) to go away and give up the domain.

 

[Domagon]

If the domain is already publicly listed for sale, consider putting a fixed price on that's at or below $1500. And/or reply back to their cease and desist with a number - not a price per se, but something more along the lines of "The domain is worth $X to me.", etc. One can question the ethics of doing that, but many people have earned a bundle playing the gray area of TM domains...

An important caveat is the above approaches tend to be extra risky with high profile TM holders, since often do lots of UDRPs, and from my understanding, often at substantial discount, and/or file lawsuits (they can potentially skip UDRP and sue right away and/or afterwards if the decision doesn't go in their favor) for some to set an example / dissuade others. However, even high profile TM holders will often settle ... but it's more of a gamble over lower profile TM holders who have limited funds / less knowledgeable of UDRP, ICANN, domaining, etc.

Speaking of ICANN ... many ccTLDs have UDRP policies in place similar to that of ICANN's, but aren't explicitly governed by ICANN. Something to be aware of, since you mention it's a .US domain.

Ron

 

[NameBrandable]

I'm not a lawyer, but having invested in domains for 15 years, I've had many of these letters but never any legal actions or UDRP actions against me. As a non-lawyer, my take is to avoid anything that could be seen as "bad faith". In other words I avoid leveraging an existing trademark in any way such as selling similar products, selling competing products or even talking about their products. I would not approach a TM holder with an offer to sell. If they approach you it's different. Many times I have received a threatening letter followed by a lowball offer. In that case I explain to them why I think their threat has no legal merit, and provide a counter-offer if I'm inclined to sell.