Getting harassed by tm owner

[sharename]

I own some surname-based domains that I use for vanity email and personal websites.

I received a C&D from a well known tm owner. I responded with a polite response describing my lawful and non-infringing use of the domain (re: avery-dennison). I also said that the domain would never be used as a trademark nor in connection with their industry nor be offered for sale.

Now they are asking for a sworn affidavit repeating what I already said I would do.

Is this necessary? Do I need to reply to this?

My position is that my first letter already defines what I'm willing to do. Why generate another document?


Sharename

 

[actnow]

I am not a lawyer.

However, I would not agree to that.

You are giving up a right and receiving nothing in return.

And, by doing that. You are acknowledging that they have some rights to the name.

Hopefully, one of our esteemed legal members will offer some insight.

 

[Garry Anderson]

IANAL - but am sure that one would say you are allowed to use the word as a trademark if you wanted -

providing it was not for the same type of goods or service as any other.

In my informed opinion it would be trademark overreach to send you a full C&D if you were not infringing trademark.

As to why they need affidavit - looks like they just want assurance you will not use it illegal.

 

[jberryhill]

"Is this necessary? Do I need to reply to this?"

Lawyers will ask for almost anything. Quite often I hear from folks who have a "deadline" to answer a c&d letter, as if Moses had come down from the mountain with "answer this letter by such-and-such a date".

You gave them your answer. They seem to have accepted your answer but want to be able to nail you if you change your mind in the future or if there is a difference of opinion about whether or not your use of the domain name has changed.