Received a TM email from Fish & Richardson

[dvestors]

I received an email from Fish & Richardson. I understand they are one of the top trademark firms in the US. The email is stated in the "friendliest" way possible. It's not as threatening as I've seen others posted here. They basically want me to let the name expire, they don't even want it. I was wondering if anyone has ever received a TM letter from them before? Once I sign and mail the email they sent, should I have anything to worry about?

 

[Theo]

Never heard from them, however I would not sign ANYTHING unless it's reviewed by an attorney. Letting the domain expire might be problematic, as it could be snapped in the future with unknown consequences. If you *do* want to get rid of the domain, you are always entitled to its registration fee or other nominal cost in exchange for it. And all should be in writing.

 

[Dave Zan]

They even have a 2-letter domain for their own since 1995:

Registrant:
Fish & Richardson
225 Franklin Street
Boston, MA 02110
US

Domain Name: FR.COM

Administrative Contact:
Largey, Kelly largeyFR.COM
Fish & Richardson
225 FRANKLIN ST
BOSTON, MA 02110-2804
US
617 5425070 fax: 617 5428906

Technical Contact:
Registrar, Domain shore-dnsSHORE.NET
173 Oxford Street
Lynn, MA 01901
US
781-477-2000 fax: 781-593-6858

Record expires on 23-Jul-2009.
Record created on 24-Jul-1995.
Database last updated on 2-Jun-2005 11:37:48 EDT.

Domain servers in listed order:

DNSAUTH1.SYS.GTEI.NET 4.2.49.2
DNSAUTH2.SYS.GTEI.NET 4.2.49.3
DNSAUTH3.SYS.GTEI.NET 4.2.49.4

You sure they emailed saying they want the name to expire? They're nuts...

 

[dvestors]

You sure they emailed saying they want the name to expire? They're nuts...

Here is a paragraph out of the email:

"Because it is possible that you were unaware of the significant liability you would incur if your registration of ***.COM was found to be a violation of the Anti-Cybersquatting Protection Act, we wanted to bring this matter to your attention now, before any significant financial investments have been made in connection with the domain name, in order to give you the opportunity to voluntarily discontinue any plans that you may have to use the domain name. In addition, because *** would prefer to settle matters of this nature amicably without resorting to expensive, time consuming litigation, *** is willing to forego any claim under the Anti-Cybersquatting Consumer Protection Act (with respect to the ***.COM domain name) if you agree to the terms set forth below, namely that you not use or transfer this domain name, and you allow the registration to expire at the end of its natural term."

This is the part I have to sign:

"I, ____________________________, represent and warrant that I am the sole owner of the ***.COM domain name registration issued by Enom, Inc. I hereby agree that: (1) I will not use the ***.COM domain name either directly or through a third party for any purpose whatsoever; (2) I acknowledge and agree that I have no trademark or other proprietary rights in the ***.COM domain name, and that I will not at anytime assert that I have such rights; (3) I will not transfer the ***.COM domain name registration to any third party; and (4) I will not renew the ***.COM domain name registration and will allow the registration to expire at the end of its natural term. I further represent and warrant that I am of legal age and have the authority to enter into this Agreement."

It sounds ok to me. Any attorneys on this forum, please advise if you see anything I don't.

 

[mike031]

just take the domain offline (remove ns, if any) and then let it expire.. should be ok

 

[Focus]

whats the domain?

 

[dvestors]

I'd rather not post the name, I told them I didnt know I was violating anything upon acquiring the name. It's one of the major corporations they have listed on their website under the Trademark section.

Funny thing is I forgot I even had it until I received the email. Traffic is basically null. It receives about 10 uniques a month, and isn't even close to earning reg fee back since last october when it was acquired. Figures I get threatened with legal action for a name that makes zilch!

I can't understand why they don't want it, I know someone is going to try and catch it when it drops, then they're gonna have to go around this again. Doesn't make too much sense.

 

[draqon]

dude you should be happy that you got threatened with legal action over a name that makes zilch...its infinitely better than losing a name thats makes you $x,xxx per month. A friend of mine had to surrender a name that was making him 40k annually.

 

[dvestors]

A friend of mine had to surrender a name that was making him 40k annually.

Very true. I guess it is a "good" thing it wasn't a high earner. $40k is a big loss. I would cry with anger. They didn't ask to be compensated with the earnings he made?

 

[Mark Bolyard]

***.COM ???

I'm assuming that it's not a three letter .com, and you are using that as a example... I couldn't see how that would be infringing on a copyright...

 

[dvestors]

no it's not a 3 letter, I just used *** to edit out the name.

 

[Focus]

I would offer to part with it for a few hundred just dont use the word sale, you have to phrase it as "to justify my time, registration and trouble" They will probably catch it when it expires elsewise...

 

[dvestors]

I would offer to part with it for a few hundred

No, I don't want to ask for any compensation. It's an obvious trademark. The name, as I stated in a previous post, hasn't even earned reg fee back yet (and I've had it for 8 months). I think asking for money will just increase the chances of a legal case.

 

[MerlinK]

they're not going to sue you.

 

[namestrands]

I would contact them and submit in good faith that if the domain was to expire it is likely to be picked up by someone else further incurring charges.

Verify that they are who they say they are and then ask them to compensate transfer costs and then initiate a transfer to them.

Keep all the paper work and most importantly keep a copy of all correspondence.. Even if you allow a domain to expire you are still liable for any trademark infringement.. they could if they wanted.. pick up the domain after expiry and then go after you.

Something to consider..

 

[DaddyHalbucks]

If it is a famous, registered, and distinctive trademark --let it go.

You very definitely can be sued, and that could wreck your life.

 

[Dave Zan]

Hal, it's a more-than-a-year-old thread. :lol:

On the other hand, it's a good reminder. :-D

 

[DaddyHalbucks]

Hal, it's a more-than-a-year-old thread. :lol:

On the other hand, it's a good reminder. :-D

Hahahaha, oops.

:deadhorse:

 

[netfounder]

wow?push to me.if u dont mind

 

[Leading Names]

Just do as they ask.

It's an obvious TM and they asked nicely.

- Rob