Trademark Advice - Not the Typical Thread - I am REALLY PO'd!

by trishworks4u

Posted: 13 years ago 23 replies

INTERNET MARKETING

I know enough about Trademarks and the risk of using them in domain names. This isn't about that at all.

I had an offline business (now for sale) that I built a "state-targeted" website for. Let's pretend it's www.georgiaguttercleaners.com (it's not)

.

Now - I did business with a National company called, say - Gutter Cleaners LLC - that would refer business to other companies.

A YEAR AGO - This national Co. decides to trademark the term "Gutter Cleaners" and goes after someone with a websites/domain that they don't like and they do eventually win, apparently (not been proven).

A YEAR AGO - I'm a friend and say, "hey - I have www.georgiaguttercleaners.com - just bought it and put it up". If you guys want it, I'll transfer it to you for FREE. They say, "no thanks" - we don't want it. ( I have this in writing in email - now printed out and being set in marble).

NOW - A YEAR LATER - AFTER I have made improvements to the site, It has PR, it gets traffic, it's worth approx. $2500 and it's listed as an asset in my business for sale, they send me an email and say - "Hey Trish, we'd like to buy www.georgiaguttercleaners.com."

I go through what it's worth, how it's listed as an asset and then offer to sell it to them for $1,200 (pretty nice of me). they flip out and now "will see me in court" because "it belongs to them" and "isn't mine to sell".

WTF?

btw, all of their trademarks are listed as "Gutter Cleaners LLC" (this isn't really the name). Does that make a difference?

#advice #pod #thread #trademark #typical

CDarklock

13 years ago

Originally Posted by trishworks4u

( I have this in writing in email - now printed out and being set in marble).

Take it to a lawyer.

That said: you have a strong case. Their trademark is sufficiently generic, it will cost them a significant amount of time and money to sue over it, and you have solid grounds for a countersuit which includes your attorney's fees.

I am betting that if you get an attorney to write one letter for you, this situation will disappear. People are quick to threaten lawsuits, but once you lawyer up, they tend to lose interest quickly.

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suemax

13 years ago

Originally Posted by CDarklock

I am in UK, and I would expect that the UK law is different. This seems crazy to me. Firstly, you can prove it is yours. They are mistaken. I reckon they forgot that they DIDN'T buy it and it's as simple as that. Even if they owned the trademark "Georgia Gutter Cleaners", surely they'd have to bring and win a case to defend that trademark?

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seafrontsteve

13 years ago

Originally Posted by suemax

I used to manage a number of dog sites for my ex wife - who is a great dog trainer. Her friends started calling her the 'Gentle Dog Leader' and I actually registered that domain name. Then I found that Gentle Leader was atrade name for a company selling dog leads, but also got involved with dog training.
So I spent a long time discussing this problem with a trademark lawyer.
Bottom line - not only should I not use any name that included Gentle Leader, but it would also be a risk to use any name with similar meaning! (Such as mild leader etc)
That surprised me in one way - but just went to show, there are plenty of people making a living from these types of dispute

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trishworks4u

13 years ago

LOL - I actually took a "time out" from my gmail last night b/c I was so irritated. watched a Disney movie and went to sleep.

As I suspected, Schizo to the max. They offered $500 for the domain. A few minutes later, came back and said "Nevermind - I found guttercleanersgeorgia.com (that's not really it) and I'll just use that instead".

uh - so what about my site and your stupid TM?

THEN, later on - get an email asking about my "seo services".

I don't think I'm taking on any new clients at this time.

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Bill Farnham

13 years ago

Originally Posted by trishworks4u

THEN, later on - get an email asking about my "seo services".

I don't think I'm taking on any new clients at this time.

Trish,

You should be able to get them a #1 ranking for "bozo" without breaking a sweat.

~Bill

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trishworks4u

13 years ago

sigh - no doubt.

This afternoon, I get another one. "After having my attorney review our emails, I'd like to offer you $1,000 in good faith for the domain".

LOL - huh? thought you found that other one...

um - ok. DEAL!

Let's see how that goes. I fully expect them to be ready to sue me again by midnight.

Thanks
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sbucciarel

Banned 13 years ago

Originally Posted by trishworks4u

Let's see how that goes. I fully expect them to be ready to sue me again by midnight.

This guy is a real piece of work. Hope the deal goes through with no more problems.

Thanks
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davezan 13 years ago

Originally Posted by sbucciarel

This guy is a real piece of work. Hope the deal goes through with no more problems.

Agreed. Chances are, the other party's lawyer consulted others familiar with
this, and told him/her/it it's better to make this deal rather than sue or file a
dispute for the domain.
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David
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Headfirst 13 years ago

This is a tough one. You can talk to a lawyer, but it's going to cost more than the sale price to deal with it in court. Unfortunately, the little guy usually loses out in cases like this.

You might have something if they said they didn't want the domain in writing (not email)

Talk to a lawyer. If need be find a lawyer in need of a website and barter.
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JackPowers 13 years ago

If they can take the domain from you then your legal system sucks. If their trademark is just two generic words then I can't see them winning.

You probably need legal advice, but if it was me, I would be very tempted to laugh it off.
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seasoned 13 years ago

All the LLC does is basically say "HEY, THINK TWICE! We are a LIMITED LIABILITY COMPANY". It probably reduces lawsuits, and makes it clear it is an LLC. AND, if you had LLC in the name, they would almost certainly have a case. If you are advertising gotter cleaners in georgia, I don't think they would have a case. IANAL, but that is MY take!

Keep in mind, I am talking about GENERAL names PROPERLY SPELLED! If it were georgiaxeroxcopiers, for example, xerox could maybe sue, even if they DID effectively give up the trademark by letting it be used as a generic term. I would stay away from THOSE things.

BTW the UDRP provides for ARBITRATION.

Steve
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- Bill Farnham 13 years ago
  
  This is just anecdotal...
  
  A friend of mine built up his business to the point he started franchising it. Well over 150 franchises at the time in many different States.
  
  Trademarked the name, of course, but was denied by the courts the ability to open up a franchise in a limited area where some other local business had been using the name for a long time.
  
  Basically, they had been using the name in trade before he got his Trademark.
  
  Now obviously, THEY would not have been allowed to use the name on a National basis due to his Trademark. But the court said he had no claim to it in the vacinity where this other person was doing business.
  
  It's called grey area, and Attys love that part.
  
  ~Bill
  
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trishworks4u

13 years ago

thanks guys. I actually think they may have a "clue" that they may not be on firm ground with this - or this person is schizophrenic.

After basically telling me that they'll see me in court and take me for everything I'm worth, I got another email hoping for negotiation of a "reasonable purchase" with me. :confused:

whatever...

I wasn't super nice in my response though. :rolleyes:

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davezan

13 years ago

Originally Posted by trishworks4u

After basically telling me that they'll see me in court and take me for everything I'm worth, I got another email hoping for negotiation of a "reasonable purchase" with me. :confused:

Heh, keep that. Might come in handy.

There's one lawyer in your state who specializes in this if ever:

Howard Neu

Good luck.

Thanks

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David

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seafrontsteve 13 years ago

I have used a tradename for many years that somebody later trademarked.
My understanding is there is nothing they can do against me - because I have proof of prior use and continuous use since. In fact I could well cause them problems with the trademark. One usual way to prove prior use is by keeping letters with post dates. In my case I actual have articles published in offline magazines.
I believe that you are not allowed to use a registered trademark as even part of a domain name so long as it was registered before you started using it.
One difficulty seems to be that you actual told them you bought the domain name after they registered it? Or do you have proof that 'recent' was in fact before they applied for the name?
As quite a few people have already said, the only winners here are likely to be the lawyers
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Thomas Wilkinson 13 years ago

I had a very similar situation three years ago. Took two phone calls and a letter from an attorney to win that one. I wouldn't have sold them the site for any amount of money after that. I filed paperwork with the state of Florida and they had their DBA registration invalidated and had to change their business name or pay me a license fee. They changed their business name.

Thomas
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- AnitaCross 13 years ago
  
  A friend of mine did some keyword research, and found a niche he thought he could make some money in. The problem was, the domain he wanted was already taken, and the site well established in the niche. He registered a different domain name that included the keywords he was targeting, as well as an additional, appropriate word.
  
  Fast forward a number of years.
  
  My friend's site is doing quite well in the niche. So much so, he has drawn the attention of the competing site with the similar name. They have their attorney contact him, essentially demanding he give them his domain, claiming that because of the similarity of the domain name and some alleged complaints, he was damaging their business.
  
  This company had trademarked their generic termed name, and used that as the basis of their demands. They provided a copy of the trademark document, which I got my friend to email me. Looking over the document, I found a section that specifically stated the trademark did not cover the words in the trademark, only the image, and that it didn't prevent anyone from using those words.
  
  I suspect, if you insist on them providing you with the document that proves they have registered their trademark, you will find similar wording, assuming the words in question are as generic as your example of "gutter cleaners".
  
  As for my friend, he spoke to his attorney... and he still has his profitable website today.
  
  Hope this helps,
  -Anita
  
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trishworks4u 13 years ago

yes, i highly doubt that this will ever get anywhere near a judge. site's just not worth that much.
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TimG 13 years ago

I'd recommend you drop a line to Brian Kindsvater. he goes by Kindsvater in the forum. He is a lawyer that deals with these types of cases and is helping me with my own domain name issue.

Respectfully,
Tim
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sbucciarel Banned 13 years ago

Did you use TESS to see if their trademark has actually been accepted? Was your domain registered before their trademark? You've got the email where they refused it earlier. Don't lose that. I think I would not communicate with them any longer until I had something from an actual lawyer rather than them blowing off steam. Look it up in TESS and see what the status of the trademark is and the description. Like someone mentioned, if the terms are generic, it could be the work mark or image is the only thing that is trademarked.
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trishworks4u 13 years ago

hmmm - appears that they had their TM filed before I registered the domain.

regardless, it was offered to them for free in good faith and I'm not handing it over now without making things very difficult for them.
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- AnitaCross 13 years ago
  
  Originally Posted by trishworks4u
  
  hmmm - appears that they had their TM filed before I registered the domain.
  
  The same was true for my friend.
  
  The stickler will be in the details of the trademark. If it specifically states they don't have exclusive use to those words, then the trademark means nothing in their attempt to commandeer your site.
  
  That doesn't mean they can't come up with some other legal mumbo-jumbo to try to force the issue.
  
  Bottom line is you really need to consult an attorney.
  
  BTW, it's also possible that all the legal posturing is an attempt to manipulate/intimidate you into selling the site to them for a much lower price.
  
  Once the dust settles, assuming you still own the site, tell them the sale price has expired and they'll now have to pay full price if they still want the site.
  
  Good Luck.
  
  -Anita
  
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Rsberg 13 years ago

Just goes to show...

No good deed goes unpunished.

Sorry to hear about your troubles. Please update this with the final result, I know many others (myself included) willbe interested in seeing how this pans out.

Good luck!
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Trademark Advice - Not the Typical Thread - I am REALLY PO'd!

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