cease and desist letter - please help

[livetronix]

Hello. My partner and I run www.GreedyFools.com, a web site geared towards helping people manage their finances and save money. We have free articles, tips, forums, etc.

Yesterday we received a letter from the lawyers of 'The Motley Fool' (see www.fool.com) requesting we stop using our 'Greedy Fools' name and domain name since, quote: "The similarity between your GREEDY FOOLS name and The Motely Fool's MARKS, and the substantial similarity of the services in connection with which these marks are used, is likely to lead to confusion, mistake or deception..."

I'm curious what our options are... We can't afford to hire lawyers to fight this, but i'm still curious if we are infact even doing anything illegal. As far as the law goes regarding trademarks I wasn't under the impression the name GreedyFools.com infringes on a registered trademark "Fool.com" and "The Motley Fool". The only similarity is the word FOOL and we use it in the plural form.

Any information/suggestions, would be very appreciated.

Thanks.

 

[darrenl]

IMHO nothing is illegal here. Just because its close to that name doesn't make it theirs.

 

[Jack Gordon]

I am not a lawyer, but I disagree. I think you are clearly infringing on somebody else's livelihood here, and they have every right to go after you with the expectation of winning. It doesn't mean they will - that depends on the actual strength of their case. But I would take their threat seriously.

You should really come up with a unique concept and build it up. Infringing on the successful ideas of other is a no-win situation.

 

[livetronix]

We have always considered ourselves a money saving site. We are not an investing site like they are. We never considered ourselves to be like them in any way or to even be a competitor of theirs. I'm not sure how we are "clearly infringing" on them - I don't see that we are at all and that is why I posted here.

What we really need is advice - what options do we have and is it worthwhile to make a stand?

 

[Garry Anderson]

I believe the word 'fool' cannot be claimed for worldwide use by just one business in connection with finance.

After all - it is a very well known saying: "a fool and his money are soon parted".

http://www.google.co.uk/search?q=fo...UTF-8&oe=UTF-8&hl=en&btnG=Google+Search&meta=

From The New Dictionary of Cultural Literacy, Third Edition. 2002:

A fool and his money are soon parted

Foolish people do not know how to hold on to their money.

http://www.bartleby.com/59/3/foolandhismo.html

It may be significant (I do not know) to ask them why they abandoned fool.com on March 14, 2000 - only to file again on March 17, 2000.

In my opinion 'The Motley Fool' should not be allowed to prevent the whole worlds financial businesses from using this word.

IANAL - although I believe many lawyers are corrupt and without honour (honor - U.S. spelling).

Perhaps some honourable/honorable lawyer would care to say if this opinion is wrong or right.

Word Mark FOOL.COM
Goods and Services (ABANDONED) IC 042. US 100 101. G & S: investment, insurance, credit, real estate, financial planning and financial services information, guidance and services; namely on-line and printed materials including investment, insurance, credit, financial planning, and financial services information, guidance and services. FIRST USE: 19960901. FIRST USE IN COMMERCE: 19960901
Mark Drawing Code (1) TYPED DRAWING
Serial Number 75652395
Filing Date March 5, 1999
Owner (APPLICANT) The Motley Fool, Inc. CORPORATION DELAWARE 123 N. Pitt Street Alexandria VIRGINIA 22314
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record JANET L. CULLUM
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator DEAD
Abandonment Date March 14, 2000

Word Mark FOOL.COM
Goods and Services IC 042. US 100 101. G & S: Providing an on-line publication in the fields of investment, personal finance, insurance, credit, real estate, financial planning and financial services. FIRST USE: 19990900. FIRST USE IN COMMERCE: 19990900
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76002746
Filing Date March 17, 2000
Published for Opposition December 19, 2000
Registration Number 2435231
Registration Date March 13, 2001
Owner (REGISTRANT) Motley Fool, Inc., The CORPORATION DELAWARE 123 N. Pitt Street Alexandria VIRGINIA 22314
Attorney of Record Peter J. Willsey
Prior Registrations 1953034
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE


Word Mark FOOL.COM
Goods and Services IC 036. US 100 101 102. G & S: financial planning and guidance information services related to investments, personal finance, insurance, credit and real estate. FIRST USE: 19990900. FIRST USE IN COMMERCE: 19990900
Mark Drawing Code (1) TYPED DRAWING
Serial Number 76002742
Filing Date March 17, 2000
Published for Opposition December 12, 2000
Registration Number 2433553
Registration Date March 6, 2001
Owner (REGISTRANT) Motley Fool, Inc., The CORPORATION DELAWARE 123 N. Pitt Street Alexandria VIRGINIA 22314
Attorney of Record Peter J. Willsey
Prior Registrations 1953034
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[Garry Anderson]

Regarding trademark registration:

It is very important to note that companies use "computer services" to claim these words (class 42).

This is like saying "we are only one that can use these words on the Internet".

As with the telephone, most businesses will use the Internet. Would any company be allowed to prevent others from using the telephone?

So for example - for the word 'FOOL' (on its own), you will note Motley Fool have no claim on Class 36: financial affairs and monetary affairs (like they do with 'FOOL.COM'). They have class 42 - computer services.

Word Mark FOOL
Goods and Services IC 025. US 022 039. G & S: Clothing, namely hats, T-shirts, caps, tops, socks, footwear, jackets, pants and sweaters. FIRST USE: 19940804. FIRST USE IN COMMERCE: 19940804
IC 042. US 100 101. G & S: computer services, namely, providing on-line informational guides in the fields of investment, insurance, credit, real estate, financial planning and financial services. FIRST USE: 19940804. FIRST USE IN COMMERCE: 19940804

Mark Drawing Code (1) TYPED DRAWING
Serial Number 75652308
Filing Date March 5, 1999
Published for Opposition September 23, 2003
Owner (APPLICANT) Motley Fool, Inc., The CORPORATION DELAWARE 123 N. Pitt Street Alexandria VIRGINIA 22314
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record JANET L CULLUM
Type of Mark TRADEMARK. SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

 

[HOWARD]

If you cannot afford a lawyer, as you indicated, you might as well give it up because you will need one to defend you in this matter. I believe that your GREEDYFOOLS.COM URL is completely defensible, especially considering your use, but they will win if you don't raise a good legal defense.

 

[zouzas]

is the mark for fool or fools?


I have Fools.us any problems here?i was planning maybe a political forum for the election year coming up!

 

[livetronix]

Originally posted by HOWARD
If you cannot afford a lawyer, as you indicated, you might as well give it up because you will need one to defend you in this matter. I believe that your GREEDYFOOLS.COM URL is completely defensible, especially considering your use, but they will win if you don't raise a good legal defense.

Thank you that information was helpful.

 

[livetronix]

Originally posted by zouzas
is the mark for fool or fools?


I have Fools.us any problems here?i was planning maybe a political forum for the election year coming up!

"The Motley Fool"
"Fool.com"
"Foolish"
"Fool's School"
"Foolmart"
"Foolish Four"

These are all trademarks they have registered.

I wouldn't guess you'd have any problem using Fools.us for a political forum, but who knows.

 

[hiOsilver]

I assume that one of the attorneys on the site will offer an opinion soon [I now see that Howard Neu did offer one], as you will be best served by getting a professional opinion or two (even a free one) . If your site is really worth it to you, you might want to let this go to the UDRP where it does not cost a fortune to defend yourself. I probably would.

I think that TMF is way off base, but that is just my opinion. They use "The" in front of their site name, in addition to using the singular, rather than the plural. Furthermore, greedy and motley are quite dissimilar adjectives. And, also, the look and feel of your site has nothing significant in common with TMF. In practical terms, your site is NO threat to them.

I think that you could win in a UDRP proceeding, but you might want to hire one of the attorneys from this site, at least for advice. It will come down to money. Is it worth defending your site? You may want to look around now for a 2nd choice name, as you might be better off going to it rather than fighting. You might even ask that TMF bear the cost of your switching to an alternate name.

The use of "Fool" in a financial advice context is somewhat novel, in spite of the familiar saying quoted previously in this thread. So, The Motley Fool is not entirely without a case. You are into a fairly subjective part of the area of Trademark protection.

Personally, I cannot see how anyone, even a fool, could be confused (or fooled, as it were) by GreedyFools.com with respect to the TheMotleyFool.com. Good Luck.

 

[actnow]

HioSilver,

Howard is a prominent trademark lawyer. And, he suggested to fight it
or lose it.

 

[Steen]

Originally posted by livetronix
We have always considered ourselves a money saving site. We are not an investing site like they are. We never considered ourselves to be like them in any way or to even be a competitor of theirs. I'm not sure how we are "clearly infringing" on them - I don't see that we are at all and that is why I posted here.

What we really need is advice - what options do we have and is it worthwhile to make a stand?

It is a related insdustry though. (I believe)


About the second part,
If you want legal help, hire a lawyer.

 

[LewR]

Originally posted by HOWARD
If you cannot afford a lawyer, as you indicated, you might as well give it up because you will need one to defend you in this matter. I believe that your GREEDYFOOLS.COM URL is completely defensible, especially considering your use, but they will win if you don't raise a good legal defense.

That says it all - if you can afford to lose the name, then you can try it yourself. If not, perhaps you should be pricing legal representation.

 

[jberryhill]

Here's a very simple rule of thumb for the readers of this thread.

When you got as far as reading this:

"My partner and I run www.GreedyFools.com, a web site geared towards helping people manage their finances and save money"

Did you, before reading any further in the initial post, correctly guess who was going to turn out to be the folks that sent the c&d letter?

 

[hiOsilver]

Originally posted by actnow
HioSilver,

Howard is a prominent trademark lawyer. And, he suggested to fight it
or lose it.

I agree 100%. I just missed his post in the thread when I posted.

 

[hiOsilver]

Originally posted by jberryhill
Here's a very simple rule of thumb for the readers of this thread.

When you got as far as reading this:

"My partner and I run www.GreedyFools.com, a web site geared towards helping people manage their finances and save money"

Did you, before reading any further in the initial post, correctly guess who was going to turn out to be the folks that sent the c&d letter?

John,

Thanks for the rule of thumb! However, could you please clarify.

I did not think about it hard, not like it was on Who Wants To Be a Millionaire. However, TMF did not occur to me and I used to be very active with The Motley Fool (back when they were on AOL, before the Web). Of course, others may have gotten it. I would guess that if you asked this question of a 1000 random people over 21 on the Web, that maybe 5% (or less) would say The Motley Fool. So, based on your rule of thumb, how do you interpret a 5% response?

 

[jberryhill]

"So, based on your rule of thumb, how do you interpret a 5% response?"

I wouldn't. A "gut feel", based on some experience in the area, is a starting point. But, contrary to the notion above that any attorney should venture a reliable "opinion" in a public forum, any attorney's "gut feel" is no better than anyone else's.

I personally don't think people should post the detailed facts of their specific legal situations in public forums, because that can cause more problems than it solves. I've tried to make that point in various ways. Some folks get it, some folks don't. But the last thing I'm going to do is render a legal opinion on a bulletin board.

There is an extensive literature on the use of consumer surveys as evidence of consumer confusion. Consumer confusion, for trademark purposes, refers to consumers in the relevant market, so you have to go from "1000 random people over 21", to something like "1000 people who are present or prospective seekers of financial advice and information on the internet". To put it in concrete terms, if you are conducting a survey to determine consumer confusion over brands of tampons, then you probably to leave out unmarried men (at least). Of course, many married or otherwise attached men who has been sent out to "pick up a few things", has no doubt experienced substantial bewilderment and confusion at the number and variety of products in that category.

There is a whole subfield of literature and decisions in the consumer survey area, and I'm sure it will come as no surprise that there is no magic percentage.

http://www.visualexpert.com/Resources/confusion.html

"However, TMF did not occur to me and I used to be very active with The Motley Fool"

If that type of response was found to be generally representative, then that would be a positive factor for the defense.

Back to the percentage question, _Anheuser-Busch, Inc. v. Balducci Publications_ is an amusing read, which also bears on the "parody defense" that some believe to be broader than it is. The Eighth Circuit found substantial confusion at 6% on the facts of this case, which relate to a "parody ad" on the back of a humor magazine:

-------
The ad in question stated “ONE TASTE AND YOU’LL DRINK IT OILY,” and featured a can of Michelob Dry pouring oil onto a fish, an oil-soaked rendition of Anheuser-Busch’s eagle design (with the eagle exclaiming “yuck!”) below a Shell Oil symbol and various “Michelob Oily” products resembling Anheuser-Busch’s family of Michelob products. The ad appeared on the back cover of Snicker, a humor magazine published by the defendant.
[...]
The appellate court found confusion likely under all of the applicable factors, particularly the strength of Anheuser-Busch marks, the similarity of the marks in the defendant’s ad, and survey evidence showing actual confusion. Over half of those surveyed thought the defendant needed Anheuser-Busch’s approval to publish the ad, and 6% thought the parody was an actual Anheuser-Busch ad. The court concluded that the survey strongly indicated actual consumer confusion. The court also held that the ad violated the Missouri anti-dilution statute, since the majority of those surveyed construed the parody as suggesting that Michelob beer contained oil, and thus the ad tarnished the image of Anheuser-Busch’s marks.
----------

One thing you have to bear in mind about "consumer confusion" as used in the trademark context. By and large, consumers are often presumed to be as dumb as dirt. If you consider the description of the parody in that case, you really gotta wonder about that 6% who thought it was a genuine ad. Nevertheless, 6% is 6%.

When you have a product for which the main appeal is to particularly discriminating and sophisticated consumers, then a defendant gets some leeway. So the battleground is often fought on the issue of the presumed level of sophistication of the ordinary relevant consumer and the amount of attention they pay to details when confronted with potentially confusing marks on goods and services of the kind in question.

So what do we have here? A two-syllable adjective ending in an "ee" sound, coupled with some variation of the word "fools", being used in connection with financial advice of some kind. I'll admit my ignorance and say that I wouldn't know what "Motley" means unless I look it up. I hear the word in context with "crew" a lot, and think it means generally disorganized, but I don't really know. Now, if you listen to, say, Marketplace on NPR, they occasionally have commentary from someone from MF. If someone hears MF on the radio, somewhat dimly remembers it, and laters sees the GF name, might they be likely to associate one with the other? Maybe, maybe not. You could argue it either way. Which is why who "wins" many of these disputes comes down to how effective the arguments are, and not necessarily some objective deific view of fact.

Howard was being much more subtle than I think anyone realizes here though. Remember the old maxim: "A Man Who Is His Own Lawyer Has a Fool For a Client"

 

[hiOsilver]

Originally posted by jberryhill
"
Howard was being much more subtle than I think anyone realizes here though. Remember the old maxim: "A Man Who Is His Own Lawyer Has a Fool For a Client"

John,

I agree with you. By the way, in my first post, I said something about "defending yourself". I may have misled people, because I should have said "defending yourself with a knowledgeable attorney". If this name is not worth the cost of a lawyer, then he probably should give it up.

Livetronix: I would hire John or Howard, as they demonstrate time after time again on this thread and in actual cases that they know domain names and the relevant law.