Trademark violation of which I was unaware

13 years ago

You should seek the counsel of an attorney in this matter as receiving answers on this
in the Warrior forum is a bad ideal.

For legal advise on what you should do, speak to some one qualified.

Have a Great Day!
Michael

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sbucciarel

Banned 13 years ago

I would agree only to transfer the domain and do that. You can inform them that you will contact your attorney for any other demands.

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Dan C. Rinnert

13 years ago

I would talk to an attorney before doing anything.

As I recall, there are a few things that factor into whether trademark infringement has actually occurred. Simply the fact that your domain name contains their trademarked term, especially if it's a common phrase, like "good bread", does not necessarily constitute trademark infringement. What also goes into consideration is how the website was used. Is your website in the same niche as their business for which they have the trademark?

It could be that they may not even have a case. They might simply be trying to intimidate people and squeeze out money from people.

Or, they might very well have a case.

That's why it's important to talk to an attorney. And do so before doing anything. Doing the wrong thing could get you in deeper trouble. So, get off the forum and get an attorney pronto!

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Kay King 13 years ago

You've had the site for three years? Did you check to see when the term was trademarked?

My advice would be the same - check with an attorney. I'd pay an attorney to respond to that email in a definitive way as I think there's something odd about it.

The message doesn't seem "right" to me. Anyone could look to see the domain will expire soon if not renewed - no need to transfer an expiring domain except the person wants the ability to grab that domain.

I would not reply to the message myself in any way, shape or form - but would send a legal response.

kay
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BulletheadX

13 years ago

Originally Posted by Dan C. Rinnert

I would talk to an attorney before doing anything.

As I recall, there are a few things that factor into whether trademark infringement has actually occurred. Simply the fact that your domain name contains their trademarked term, especially if it's a common phrase, like "good bread", does not necessarily constitute trademark infringement. What also goes into consideration is how the website was used. Is your website in the same niche as their business for which they have the trademark?

It could be that they may not even have a case. They might simply be trying to intimidate people and squeeze out money from people.

Or, they might very well have a case.

That's why it's important to talk to an attorney. And do so before doing anything. Doing the wrong thing could get you in deeper trouble. So, get off the forum and get an attorney pronto!

^^This.^^

You don't have a legal obligation to do anything demanded of you in a C&D letter. If they really want those things they'd have to go to court to force them from you. It's very common for lawyers to go overboard in those letters because they know that they cause a great deal of fear and anxiety in most people, who they know are very likely ignorant of their rights.

Companies aggressively defend their trademarks because their claims of uniqueness, powers of enforcement and so on can be diluted if they don't. Look at Band-Aid and Xerox.

In many cases you can get a free consultation with an attorney; whether you can find a trade attorney in your area is a different matter. Perhaps you can get a usable answer from one of those "ask-a-lawyer" forums online.

If it were me, I'd ignore them and let it expire, and if they contacted me again I'd shoot a note back and tell them they've already spent more in attorney fees than I'd ever made on the site and that the domain was up-for-grabs on whatever date.

However I wouldn't necessarily advise anyone else to do what I would do. :rolleyes:

Good luck,
Robert

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danifae

13 years ago

I received a lots of good hints here. Thank you to all

First, after the first period of searching for a long keyword, I did not paid much attention to this site.

Today I made a search.

- The first site on google is mysame-keyword-&different.com
The site have an extremely tiny circle thing after the FIRST word on the graphical logo. It is not visible what it is. No other trademark or copyright symbols appears an any page of the site. It doesn't seem to have anything to do to the trademark owner who contacted me through the attonery group. The only item which results from a search in the site for that 2 trademark words has very little to do with the attorney's client.

- the second site returns lots of error messages: a database deleted by the owner after the attorney letter???

- then few sites with no trademark in the url or facebook pages.

- then again mysame-keyword-&differentS.com

- then an amazon page and here for the first time I can see that the 2 words are part of a name of a producer (we are on google 2nd page)

- then squidoo pages and other sites

-then my exact same domain except that my is mysame-keyword-&mine.com and that is mysame-keyword-&mineS.com (plural).

That is... I cannot see any site from this producer but many other sites some of which using the trademarked words plus others....

@proapc how did you check the trademark date? I tried to google it but found not relevant sites.... this is a very good idea. I'm pretty sure they had it already. The attorney wrote their client had it since 1998, but I don't mind checking.....

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danifae

13 years ago

I checked here: http://tess2.uspto.gov/ but I didn't get any result.

then I checked here: Check Trademark Availability Before You Register Your Domain Name and again I couldn't find anything but I also wrote some known brands and I got no results.

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seasoned

13 years ago

Originally Posted by danifae

I checked here: http://tess2.uspto.gov/ but I didn't get any result.

then I checked here: Check Trademark Availability Before You Register Your Domain Name and again I couldn't find anything but I also wrote some known brands and I got no results.

that "assist2web" is a JOKE! I wouldn't rely on it. The USPTO only handles SOME international, and US trademarks. But the lack of it there, if you or they are in the US, REALLY strengthens your case! If THEY are in the US, they are IDIOTS! The USPTO should have been the FIRST place they registered it in. If they are NOT in the US. but you ARE, they are STILL not very smart, but it supports that you didn't know!

Steve

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gslauen

13 years ago

Yes, perhaps just let it go. They won't have a case then.

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Mo Goulet

13 years ago

I had the same thing happen to me and I checked their Trademark date and I owned the domain long before the had the TM. I sent them an email letting them know I was seeking a Regulatory Judgment in my local court and if they would like to buy the name they could have it for $2500. I they hadn't pissed me off and simply emailed me concerning the name, I might have sold it to them for $500. 2 weeks later they paid me $2500.

Don't let that letter scare you. When you tell them you are filing for RJ, they know they will lose plus they now have to come to your ball park.

The stupidest thing attorneys do is send cease and desist letters.

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webjedi

13 years ago

Originally Posted by proapc

Don't let that letter scare you. When you tell them you are filing for RJ, they know they will lose plus they now have to come to your ball park.

The stupidest thing attorneys do is send cease and desist letters.

Agreed. Do not be scared, that is their tactic.
Do not do a damn thing until you at least hear some free counsil from a professional, and let them review the letter and your background infor about this site.

My guess is they don't have a case, personally I would round file it and move on but talk to an attorney before given your URL over.

wj

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seasoned

13 years ago

Michael Mayo is right, and I am certainly no lawyer, but...

(5) agree to enter a stipulated final judgment and permanent injunction in this matter!?!?!?!?!?!?

In this case, that sounds like an inappropriate boilerplate! On the CONTRARY, YOU should get a permanent injunction saying that they will not pursue matters against YOU any more for this!

Frankly, I think something stinks here. And if you can show good faith, I doubt they have a case. I am, of course, assuming the words ARE generic, that you didn';t know about the trademark, and that you did not compete with them in ANY way unless it was a good faith use of the generic item.

AGAIN though, IANAL.

Steve

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Michael Mayo

13 years ago

OK, I took it a step further just to see what if...

"MHP International"+"trademark"

I would still recommend that you seek qualified counsel prior to any deals or resolutions.

Have a Great Day!
Michael

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mrfusion

13 years ago

If you really got balls sell the domain to them for just slightly less than it would cost to take you to court! (I wouldn't have the balls for it, I'm just saying...) :p

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seasoned

13 years ago

Originally Posted by mrfusion

If you really got balls sell the domain to them for just slightly less than it would cost to take you to court! (I wouldn't have the balls for it, I'm just saying...) :p

You DO realize there is a preference for small companies to go to arbitration. The cost to go to court may be small.

Steve

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DeJuan Collins

13 years ago

Wow, Interesting. I would most surely consult with an attorney on that issue my friend to determine what you can and cannot use for future domain creation. I would of course inquire with friend, family and business associates to see if they have a friend that's an attorney that specialize in the area of trademarks and copyrights before seek a paying lawyer first.

And if you have to pay for a lawyer I would find the cheapest trademark attorney to consult with. Remember this is a one-time consultation that can be created as an WSO to teach other internet marketers about using trademarked keyword term for domain names. So even if you incur cost turn that cost info into a info product to sell, this well maybe your first WSO in a small informative report with the help of the cheap and low-cost attorney, that way you won't lose totally financially.

Hope that helps.

De'Juan Collins

Internet Marketing Coach

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majestic12

13 years ago

This kind of thing makes my blood boil...

Firstly it makes me wonder if they are trying to scare you into "not" renewing the domain so they can get it...

Secondly you say the domain is something like "good bread machine" and they are disputing the use of the "good bread" part....

Now if the "good bread" part is a commonly used generic term or combination I would tell them to go "f£$%$" themselves.

Are you able to see any other domains that use the offending "good bread" term in their domains....

If you can then I would think you will be fine, out of sheer principle though I would dig into your pockets and pay for some legal advice...

I hate it when dodgy b£$$%^ds try and scare people....

I wish you luck and hope it all works out in your favor...

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danifae

13 years ago

Originally Posted by majestic12

Are you able to see any other domains that use the offending "good bread" term in their domains....

There are other sites with the 2 words... and one, my exact same domain but with the last word being plural, was implemented on the last november and has an incredible good Alexa rank. It doesn't sell the "trademarked" products but, like me, the same kind of products.

@sbucciarel
I searched on TESS but that company doesn't own anything. The only trademark they owned was cancelled on February because they failed to produced a "I don't know what" document. And in their site the logo shows a sort of extremely tiny circle after the first word, it might be a (TM) or something like that, but in no other place in the site there is such a sign and this is strange. Why don't they use it in the site? why is it barely visible in the logo??? But most of all why cannot I find anywhere in TESS or just googling it??

My problem is I'm not American. I might have misunderstood the meaning of that 2 words but most of all I might have difficulties in finding someone who knows how to "move" among USA laws....
I was more than willing to ask for excuses and tranfer them the domain, but why cannot I find any evidence that someone owns that trademark?

I always struggle with money and family issues and I'm really fed up to be always a surrender!!!!!

I don't want those people to make fun of me!

My contact data are public: they might have thought I cannot check and have a proper legal advice from my country........

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BulletheadX 13 years ago

You said earlier that the site/name had very little value to you. Yeah, nobody likes to feel like they're being p*ssed on but that's gonna happen now and then throughout your life; is this really the fight into which you want to invest your time and money? If it is, fine. If it isn't, let it go and file it under "pick your battles". Many people get their knickers in a twist over vague points of principle and uncertain money and wind up owing a huge amount of verifiable money to a lawyer. Putting yourself in provable debt to a lawyer is a life experience you probably don't need.

Make it a business decision: Is there greater profit or other benefit than expense/risk? If not, then take a pass.

I'd most certainly educate myself as to the truth of the situation either way for the future, and I'm sure others here would appreciate a report on what you learned.

Good luck,
Robert
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- AnitaCross 13 years ago
  
  Anyone can put a TM after their trademark, to establish it as their trademark. A registered trademark will have the circled R.
  
  Then the question becomes whether they registered the graphic as a trademark, or registered the words as a wordmark. If they registered the graphic, the registration certificate probably states that it is only the graphic that is trademarked and that the trademark does not prevent others from using those words.
  
  Regardless, as other posters have already stated, you need to consult with an attorney, preferably one that is practicing in trademark law.
  
  It will undoubtedly cost more than the site has made for you. But it will also cost much less than if you later have to fight a lawsuit.
  
  I cannot agree with the recommendation to find the cheapest atty you can. In my own experience, the cheap atty will cost you more in the long run.
  
  He's cheap because he hasn't the experience to back up charging more. But he will charge for all the time he takes to research the information he needs to help you. You will be subsidizing his education. Let someone else do that.
  
  Find an atty with many years of experience in trademark law. He may cost a lot more per hour, but will be able to help you much faster, and probably more accurately. And if he's really worth his salt, he will give you the first consult free, up to 30 or even 60 minutes.
  
  Good luck,
  -Anita
  
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seasoned

13 years ago

Originally Posted by danifae

There are other sites with the 2 words... and one, my exact same domain but with the last word being plural, was implemented on the last november and has an incredible good Alexa rank. It doesn't sell the "trademarked" products but, like me, the same kind of products.

If it is a GENERIC term, like "good bread", then selling products having to do with "good bread" makes sense and is NOT an example of bad faith. If it is a name, even GENERIC, and you sell a competitors products that DON'T relate, it could be used as a sign of bad faith! For shark, for example, you could show sharks, fish, dolphins, shark bait/repellant, etc.... PERFECTLY REASONABLE! But DON'T sell hoover vacume cleaners, because shark, which makes such products, may complain! And you would have a hard time claiming you didn't know it was a trademark.

@sbucciarel
I searched on TESS but that company doesn't own anything. The only trademark they owned was cancelled on February because they failed to produced a "I don't know what" document. And in their site the logo shows a sort of extremely tiny circle after the first word, it might be a (TM) or something like that, but in no other place in the site there is such a sign and this is strange. Why don't they use it in the site? why is it barely visible in the logo??? But most of all why cannot I find anywhere in TESS or just googling it??

My problem is I'm not American. I might have misunderstood the meaning of that 2 words but most of all I might have difficulties in finding someone who knows how to "move" among USA laws....
I was more than willing to ask for excuses and tranfer them the domain, but why cannot I find any evidence that someone owns that trademark?

If they are American, and it is not registered in the USPTO, I don't believe they have ANY right to bother you. I don't think trademarks expire, so the expiration may be because it was found to be invalid.

OH, and the two generic words may mean different things in the US. AND they could be misspelled. In such a case, a trademark and losing a court case, is more likely. STILL, that should be only academic if it is not in the USPTO.

I always struggle with money and family issues and I'm really fed up to be always a surrender!!!!!

I don't want those people to make fun of me!

My contact data are public: they might have thought I cannot check and have a proper legal advice from my country........

What country are you in? MANY countries honor, or even copy, such US laws and, as such DO have counsel that is well versed in it.

And YEAH, I was sued once at the absolute WORST time. I was literally on one side of the continent(east coast, new york), and the evidence was on the other(west coast, california) They broke several laws, etc... But the Judges office wanted things to go snail pace ahead and I knew that I would either endanger my first project with a new company, have a small fraction of my information handy, and have to attend the court via a long distance phone call, and pay a LOT more if I lost, or pay 80%. On the bright side, I have had a decade to think about it, and if they try the same tricks, I would push it all the way to the US supreme court since it violated the constitution ALSO.

Also, the lawyer seemed to say ANYTHING, no matter HOW silly. So he said I was paid early, and thus guilty. I said I was paid LATE, and he said THAT meant I was guilty! OK, how many of you pay your bills such that your vendors are ALWAYS paid EXACTLY when they are due? Let me answer that! *****NONE***** of you do! he also used the date a check cleared, rather than the date it was paid. If I got cash, or a credit draft, it would have been different! The law CLEARLY said PAID, not when the instrument clears.

Steve

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majestic12 13 years ago

Originally Posted by danifae

My problem is I'm not American. ........

You say your problem is you are not American, I would say in this case that this would work in your favor, these people would have to purse you under your own country laws.. Quite rightly it has been pointed out that if you do not really want this domain you should let it go...

I would hate to see these bullies walk away with your domain...

Again I still think this is a generic term and you got there first.... if you have had this name for 3 years and they have only taken an interest now then as a judge I would say that the "bullies" should have registered the name a long time ago...

Anyhow I hope all goes well...
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Palusko

13 years ago

You're not an American, so you don't really have to worry about US laws. Of course, there may be some international laws that may apply, but here's the thing - just because someone says you are infringing on a copyright, does not make it so. At the end, it becomes a matter how much you, as well as them, are willing to fight for it.

BTW, I would never disclose any personal or financial information to them. Again, just because they ask for them does not make it mandatory requirement.

Don't forget, you have rights. A lot of them. And the burden of proof is on them. You don't have to do a thing. They are the ones who must do all the work if they indeed want to pursue this issue.

Originally Posted by danifae

I might have misunderstood the meaning of that 2 words but most of all I might have difficulties in finding someone who knows how to "move" among USA laws....

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seasoned

13 years ago

Originally Posted by Palusko

You're not an American, so you don't really have to worry about US laws. Of course, there may be some international laws that may apply, but here's the thing - just because someone says you are infringing on a copyright, does not make it so. At the end, it becomes a matter how much you, as well as them, are willing to fight for it.

BTW, I would never disclose any personal or financial information to them. Again, just because they ask for them does not make it mandatory requirement.

Don't forget, you have rights. A lot of them. And the burden of proof is on them. You don't have to do a thing. They are the ones who must do all the work if they indeed want to pursue this issue.

Just to clarify. The US can and HAS pursued non citizens. And domains are generally subject to international law. ALL .COMs(meaning the domain name only here) are subject to US law! So losing the US case can cost you the domain. Of course, non of that is an issue HERE since the OP wants to let the domain elapse anyway. BTW copyrights are on the unique EXPRESSION, so they clearly don't apply here. Again though, copyrights are actually under an international treaty.

Steve

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danifae

13 years ago

My attorney friend is going to contact that attorney company today. I keept on searching and couldn't find any evidence their client owns the trademark.

BTW just to make it clear, the words Good bread is only an example. I might not have "recognised" those 2 words as a trademark because I'm not American. but still I really doubt it is a trademark.

I'll post any updates as soon as I know them. and I keep my fingers crossed.....

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seasoned

13 years ago

Originally Posted by danifae

My attorney friend is going to contact that attorney company today. I keept on searching and couldn't find any evidence their client owns the trademark.

BTW just to make it clear, the words Good bread is only an example. I might not have "recognised" those 2 words as a trademark because I'm not American. but still I really doubt it is a trademark.

I'll post any updates as soon as I know them. and I keep my fingers crossed.....

Being a foreigner, using english words, and assuming they are not trademarks, could be problematic. goodbread is COMMON! Verybread or greenbread, etc... AREN'T. It IS unlikely they would ever be used BUT, if they were, I guess a case COULD be made for a trademark.

The REAL question is SUPPOSED to be, are they likely to be used in conversation or writing? If they are, they shouldn't be trademarkable.

Steve

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Kay King 13 years ago

You're not an American, so you don't really have to worry about US laws.

Not necessarily the case if you are marketing to an American audience as your target market.

Having your lawyer check it is definitely the best way to proceed - please let us know how it's resolved.

kay
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Scoop

13 years ago

Originally Posted by DeJuan Collins

Remember this is a one-time consultation that can be created as an WSO to teach other internet marketers about using trademarked keyword term for domain names. So even if you incur cost turn that cost info into a info product to sell, this well maybe your first WSO in a small informative report with the help of the cheap and low-cost attorney, that way you won't lose totally financially.

I like the idea of turning the experience into a WSO.

It may be impossible to answer everyone's questions as each case is unique, but even this thread has produced quite a number of informative comments.

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BulletheadX

13 years ago

The first time I remember reading about the "bad faith" argument was in the case below. I haven't verified it but I was left with the impression that there could be criminal penalties involved for behavior akin to extortion.

Going with the viewpoint that the law/court cases rarely favor the "little guy", I'd suggest being very careful about the battles you choose to fight.

Robert

"Under the Uniform Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers, trademark owners can only take away names that someone is using "in bad faith." A sign of bad faith is registering a name "primarily for the purpose of selling" it to a trademark holder.

Read more: Madonna.com embroiled in domain ownership spat - CNET News"

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Floyd Fisher

13 years ago

Yeah, you need to talk to a lawyer on this one asap.

While I would personally be inclined to say you may have a case, even if you are in the right....is this fight really worth waging?

This is what you're in for, should you decide to fight this:

Nissan.com - Lawsuit - The Story

Read this story carefully, and decide what your next move should be.

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danifae 13 years ago

Honestly, I looked in many sites, but I cannot find these 2 words as a trademark
I checked
Trademark-Info
and then Zibb. The Global business search engine.

here I found they own a 4-word name with 2 of my 3 words
BUT!
on Free Trademark Search Online | Trademark a Word, Logo, Design or Symbol - Online. Fast & Easy| Experienced Attorneys, Easy Online Process| Get Your Trademark Now! I found that the above trademark was cancelled on 25 February 2011! and then I found the same on Tess:

"Current Status: Registration cancelled because registrant did not file an acceptable declaration under Section 8. "

It seems they don't own the 2 words of my 3-word domain and don't even own the name they used to....
I will definitively seek for an attorney advice. I feel they are pulling my nose.... I deleted the files on my site which doesn't show anymore. But many other sites with the same words are still on... maybe they made the same search...
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- Andyhenry 13 years ago
  
  Originally Posted by danifae
  
  Honestly, I looked in many sites, but I cannot find these 2 words as a trademark
  
  Do not assume that because they seem like 'normal' words and you can't find a trademark that you are ok.
  
  I had a friend, actually a fellow warrior (now deceased) who was in this same predicament a few years ago. Their domain name seemed to me (and them) like just normal words but they got sued for trademark infringement and it's much more complicated than many people realise.
  
  I'm not a lawyer and I don't play one on TV but if you were my friend and asking for my advice I would probably say - Let it expire, definitely don't agree to anything or make any payments without first seeking proper legal advice and don't stress about it. Let it go and get on with other things then if they still chase you via legal routes go see a lawyer and get proper advice about how to respond.
  
  Andy
  
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  nothing to see here.
  
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HeySal

13 years ago

Something is wrong with this - Sounds like a scam. You can check this out free of charge via your local DA's office. I'm betting its nothing to worry about but you need to make sure. If it's a scam, as I think it is - your local DA might just like to catch the jerk who sent it. They need to PROVE that they have had that site since 1998 ect. they can't just send an email and tell you that you have to start documenting earnings. That's nuts.

Like I said - your DA's office is free. Just tell them you think it's someone trying to scare you out of money -which is what it sounds like and they will look into it for you.

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AdamCBR

13 years ago

if u are based outside the US and they are based in the US, i would tell them to go F themselves.

not like you can get extradited for cases like this.

it sounds like they are fishing. just cos u get a C&D letter doesnt mean anything. lots of lawyers send these out to scare people. but you havent actually done anything wrong.

personally, if it was me. i would renew the domain, just to piss them off and ignore their letter altogether.

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webjedi 13 years ago

Originally Posted by AdamCBR

personally, if it was me. i would renew the domain, just to piss them off and ignore their letter altogether.

I would do the same.

wj
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- seasoned 13 years ago
  
  Originally Posted by webjedi
  
  I would do the same.
  
  wj
  
  I almost said the same. The letter REAKS of some spoiled brat trying to con you.
  
  Steve
  
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  sbucciarel Banned 13 years ago
  
  Originally Posted by seasoned
  
  I almost said the same. The letter REAKS of some spoiled brat trying to con you.
  
  Steve
  
  Originally Posted by webjedi
  
  I would do the same.
  
  wj
  
  Actually, you seem to have verified that it was from a legitimate law firm and lawyer. That's enough to proceed with caution. If they own the trademark, they can sue you ... for really big bucks.
  
  Search TESS for the trademark. If it exists, give them the domain. Ignore the rest of the demands. Agree to nothing and seek professional counsel.
  
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AdamCBR

13 years ago

OR...reply requesting for proof of trademark, before u even consider anything.

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txconx

13 years ago

I agree - before you do anything else, ask for the registration number of the trademark so you can research it.

I had someone send me a threatening e-mail about one of my domain names, referring to their "trademark" - and it turned out they didn't have a trademark. Asking for proof of the trademark is now one of my first responses to threatening e-mails like this.

Keeping a cool head is your first line of defense.

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danifae 13 years ago

Yes, that's a very good idea. I did not imagine the difficulties in looking for trademarks. I thought that they were all listed in an official site.

I gave a look again at the email I received. Am I sure it is real? I checked in the site of this big attorney group: there is a partner with the name of the email and the email address on the site seems to be the same from which the email was sent. I contact a friend who is an international attorney and during the weekend I'll ask for advice.

But the first step is surely to have reassurance the email really comes from them and to have the trademark registration number.

Thank you to all for your support!!
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sbucciarel

Banned 13 years ago

TESS is where you search for trademarks in US
Trademark Search - TESS

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CDarklock

13 years ago

Originally Posted by danifae

I really need your help!

You really need an attorney.

I can tell you what I would do. I would write back to the company. Having done this, I would probably never hear from them again, because what they actually want is almost certainly to put paperwork on file to the effect that they have made a good faith effort to protect their trademark.

But here's the thing: I would do this - without the advice of legal counsel - because I have studied intellectual property law for years. So I can write that letter for myself as a pro se action which I have the legal right to take. But I cannot write that letter for anyone else, nor can I instruct anyone else how to write that letter, without potentially being accused of practising law without a licence. And if you knew enough about intellectual property law to write that letter, you wouldn't be asking this question.

So you need to get an attorney.

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ratracegrad

13 years ago

If the term they trademarked is "good bread" here is their trademark information. You can do a search here:

Trademark Electronic Search System (TESS)

Word Mark GOOD BREAD Goods and Services IC 030. US 046. G & S: Bakery goods. FIRST USE: 20050500. FIRST USE IN COMMERCE: 20050500 Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 78672298 Filing Date July 18, 2005 Current Filing Basis 1A Original Filing Basis 1B Supplemental Register Date August 14, 2006 Registration Number 3185072 Registration Date December 12, 2006 Owner (REGISTRANT) HEB Grocery Company, L.P. HEBCO GP, L.L.C., a Texas limited liability company, its sole general partner. LIMITED PARTNERSHIP TEXAS 646 South Main San Antonio TEXAS 78204 Attorney of Record Kirt S. O'Neill Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "BREAD" APART FROM THE MARK AS SHOWN Type of Mark TRADEMARK Register SUPPLEMENTAL Live/Dead Indicator LIVE

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BulletheadX 13 years ago

Huh. I used to see commercials for Kern's Bread (in the South, in the 70s) and their tag line was "Kern's is good bread."
I would have thought "good bread" was far too generic a term for a trademark. Didn't Trump get shot down on "You're fired!"?

Robert
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Sarah Bosen

13 years ago

I'm sorry, that really sucks.

But you should research the trademark. See if it is even a trademark at all. But since the sight didn't bring in a lot of money, its not really worth it to hire an attorney. If the trademark is real you may need to just cut your loss.

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gar

13 years ago

i really did not know about this though....thats crazy

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seasoned

13 years ago

Give me a break! Bread, as a word, has probably been used for over 1000 years. It can be seen in ALL germanic languages, so far as I have seen. Granted, they are slightly different, but obviously related. And good seems to be about as old. The two have OFTEN been used together. the "word mark" shown above even SPECIFICALLY excludes BREAD! And Good is the adjective most likely to precede bread to indicate its taste, etc... It IS apparently "GOOD BREAD Goods and Services", and THAT is sufficiently long to be a proper trademark, even if all the words ARE common. Heck, it says the company is called "G & S: Bakery goods.". Could G & S mean goods and services?

Steve

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ClickPimpsta

13 years ago

definitely get advice from an attorney.

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Kate Davies

13 years ago

Hi

Have you checked out the attorney?

Is MHP International (as mentioned in your post), the attorneys? Because, I can't find them on Google.

There is a supplier of massage chairs called MHP International. And there's the MHP Law Firm in Shanghai. But I can't find any law firm with that name.

This could easily be a scam, from someone who knows that your domain name is up for re-registration.

Make sure the lawyers are genuine before doing anything else.

Good luck
Kate

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danifae

13 years ago

Originally Posted by digileaf

Hi

Have you checked out the attorney?

The attorney is GORDON & REES LLP. It seems to be a big attorney company and I think the email really come from them.

My friend tried to contact them yesterday: the partner who signed the letter will phone him back today. :confused:

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danifae

13 years ago

I asked them for the registration number and this is the reply I got:

"Dear Mrs ...
XXXXXX XXXXXX is not registered, nor is it required to be. A valid trademark in the United States is not required to be registered. Trademark rights in the United States arise from use, not from registration, which merely gives you additional legal rights. An unregistered trademark is referred to as a common law trademark. The common law is the Anglo-American system of law, as opposed to the civil law system typical in continental Europe, with which you may be more familiar. In the U.S., an unregistered or common law mark is still a valid trademark, and infringement is still infringement as false designation of origin under the Lanham Act. You may wish to consult a U.S. trademark lawyer in this regard, who will confirm this to you.

You do not, therefore, "need to obtain confirmation of the registration number of the brand [we] are representing." That is irrelevant to my letter, which I attach again. I request your substantive response within one week, please."

Any comment or suggestion?

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davezan

13 years ago

Danifae,

You actually do not have to do a thing for them as mentioned before, although
they could take action if they so insist. If you're willing to only give the domain
name to them, then tell them that's all you'll do.

Side question: without revealing the domain name here, did its content show
anything about the trademark in question at any time? Ads of, say, competing
products perhaps?

As usual, this isn't legal advice. But I'm rather surprised you haven't seemingly
sought an intellectual property with real-world experience on this yet, and few
of them do free consults for especially "simple" cases.

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danifae

13 years ago

Originally Posted by davezan

Danifae,

Side question: without revealing the domain name here, did its content show
anything about the trademark in question at any time? Ads of, say, competing
products perhaps?

As usual, this isn't legal advice. But I'm rather surprised you haven't seemingly
sought an intellectual property with real-world experience on this yet, and few
of them do free consults for especially "simple" cases.

I've tried to contact a legal office in the same city where the person who wrote me is, who offers free consultation, but I got no answer. This morning (must be still night for you) I wrote to other 4 attorneys through their contact forms, and I got one automatic reply, so at least I know they received my message (I don't trust much contact forms). Hopefully someone will tell me something.

I kept on searching internet and I found that all the times attorneys send a mere "cease and desist letter" not asking for all the things I'm asked for.... This is a very big attorney company. They must be very aggressive and bad. Still I don't understand why all the other sites with simple variations of the domain are still on.... some even on the first google page.

My site was about the same kind of products, being an ebay affiliate site I surely showed also their products, even thought they mostly do something which I did not promote. That is their trademark is (as an example)

Good Chocolate

My site is Good chocolate cookie.com

They mostly produce cakes (only few cookies) and their site is

Good chocolate cakes.com

and there are other (affiliate) sites named:

Good chocolate cookieS
Good chocolate cakes.net
Good chocolate cakes.org
Very Good chocolate cookies
Good chocolate cakes online

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Azrul

13 years ago

Originally Posted by danifae

I asked them for the registration number and this is the reply I got:

"Dear Mrs ...
XXXXXX XXXXXX is not registered, nor is it required to be. A valid trademark in the United States is not required to be registered. Trademark rights in the United States arise from use, not from registration, which merely gives you additional legal rights. An unregistered trademark is referred to as a common law trademark. The common law is the Anglo-American system of law, as opposed to the civil law system typical in continental Europe, with which you may be more familiar. In the U.S., an unregistered or common law mark is still a valid trademark, and infringement is still infringement as false designation of origin under the Lanham Act. You may wish to consult a U.S. trademark lawyer in this regard, who will confirm this to you.

You do not, therefore, "need to obtain confirmation of the registration number of the brand [we] are representing." That is irrelevant to my letter, which I attach again. I request your substantive response within one week, please."

Any comment or suggestion?

i dont know a thing about trademark law. but when i read the bolded line i burst out laughing. pardon me if im wrong. but is it possible to have a trademark without registering it?

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danifae

13 years ago

Originally Posted by arcanetyro

i dont know a thing about trademark law. but when i read the bolded line i burst out laughing. pardon me if im wrong. but is it possible to have a trademark without registering it?

Yes, unfortunately it seems so... At least, after an internet search I discovered that in USA you have a trademark also by use. it seems there's no really need to register it.

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James Sides 13 years ago

After reading through this entire thread there is some really good info but I'm curious to see how this turns out.

Sooo many courses downplay the problems with using trademarks in your domain so I'm very interested.

I've only known one person personally who got hit with a C&D and the ONLY thing she had to do was turn over the domain. This all sounds like a ploy to squeeze money out of the "little guys(gals)" of the world.

Best of luck to you!

-James
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- Vogin 13 years ago
  
  Hmmm...
  
  I'm trying to imagine myself in your situation. I also live outside of US and I hate law, so my knowledge is limited to none.
  
  I have to admit that my first initial response would be "what the hell? Spammers are getting really off the chain these days" and the email would end up deleted.
  
  Above all, STAY CALM. You seem you have already wasted a lot of time on this case, I would cease all this panic and searching and stuff.
  
  In general, there's not much to do, because you do not plan to keep the domain. I would ignore their emails, let it pass away and since you won't be the owner, you "won't use it" (lol, what a weird law) and good luck with any lawsuits.
  
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davezan

13 years ago

Originally Posted by arcanetyro

pardon me if im wrong. but is it possible to have a trademark without registering it?

Absolutely. It's called a common law trademark, much of it having originated in
the U.K.

Think of it this way: if you don't register for your dog's license at your state if
required, it's still a dog, right?

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Frank2

13 years ago

Originally Posted by davezan

Absolutely. It's called a common law trademark, much of it having originated in
the U.K.

Think of it this way: if you don't register for your dog's license at your state if
required, it's still a dog, right?

Yes they can have a trademark under common law but you analogy is confusing.

If they have been in business and have been advertising say "Roy's Soap" then their company is known to sell Roy's soap. Their use gives them a common law trademark.

However - if I come along and pay the fee and fill out the forms for Roy's soap and the USPTO issues me a trademark - they are screwed.

After I file, they could challenge my Trademark filing. It is their responsibility to know about it and check the UPSTO pending filings. If they don't catch it and challenge and the USPTO gives me the Trademark - then they are screwed. They could sue me to get Roy's soap trademark back but if I am out selling Roy's soap and I have the trademark - they are going to lose.

It would be cheaper to do the filing for the trademark than have the attorney write the letter. This is very weird. This is the dumbest company ever.

I never heard of a company claiming they have a trademark that has not filed for a trademark. Idiocy. :confused:

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Frank2 13 years ago

Their site is good chocolate cakes? WTF? Is this correct? No wonder they don't have a trademark filing. This is so generic that the USPTO will not issue a trademark that generic.
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davezan

13 years ago

Originally Posted by Frank2

Yes they can have a trademark under common law but you analogy is confusing.

If they have been in business and have been advertising say "Roy's Soap" then their company is known to sell Roy's soap. Their use gives them a common law trademark.

However - if I come along and pay the fee and fill out the forms for Roy's soap and the USPTO issues me a trademark - they are screwed.

After I file, they could challenge my Trademark filing. It is their responsibility to know about it and check the UPSTO pending filings. If they don't catch it and challenge and the USPTO gives me the Trademark - then they are screwed. They could sue me to get Roy's soap trademark back but if I am out selling Roy's soap and I have the trademark - they are going to lose.

It would be cheaper to do the filing for the trademark than have the attorney write the letter. This is very weird. This is the dumbest company ever.

I never heard of a company claiming they have a trademark that has not filed for a trademark. Idiocy. :confused:

Analogies can only do so much, although they're an attempt to comprehend a
point. The point here is a trademark becomes one if it's being used as one.

Even USPTO answers those:

Small business - Trademark Protection - How to Trademark Your Name - USPTO Stopfakes.gov

A trademark includes any word, name, symbol, or design, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.

Trademarks FAQs

Must I register my trademark?

No. You can establish rights in a mark based on use of the mark in commerce, without a registration.

Registration just gives more benefits over a common law mark. Of course, that
has various implications if you think about it.

Oh, and the OP only gave "good chocolate" as an example rather than the real
terms being claimed as a trademark by that other party. It isn't always a good
idea to reveal it without risking the other side's lawyers possibly finding this.

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seasoned

13 years ago

Originally Posted by davezan

Absolutely. It's called a common law trademark, much of it having originated in
the U.K.

Think of it this way: if you don't register for your dog's license at your state if
required, it's still a dog, right?

So would you use that logic to fight the ticket that they WILL give you? A dog license doesn't license them to be a dog. It licenses them to be out in the open. A driver's license does much the same for a person in a car. You can drive a car, nobody will stop you. Schools, etc.... even ENCOURAGE it and provide a car! But you can't drive on public roads if you aren't licensed in some way.

Steve

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davezan

13 years ago

Originally Posted by seasoned

So would you use that logic to fight the ticket that they WILL give you? A dog license doesn't license them to be a dog. It licenses them to be out in the open. A driver's license does much the same for a person in a car. You can drive a car, nobody will stop you. Schools, etc.... even ENCOURAGE it and provide a car! But you can't drive on public roads if you aren't licensed in some way.

Steve

Steve, please read post # 68.

Originally Posted by Michele Buch

I'd renew the domain name and offer to sell it to them for $997.
They don't have a registered trademark, so they don't have a leg to stand on.

The Anticybersquatting Consumer Protection Act: Key Information - Internet Library of Law and Court Decisions

The ACPA protects both registered and unregistered common-law marks.[4] However, the mark must be "distinctive" (a trademark term of art) or "famous" (see §1125(c)) at the time the domain name is registered to receive the statute's protection.

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")

1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?

The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.

And trying to sell the domain to a potential trademark holder can give them a
cause of action against you. Brian will also tell you that if you ask him.

Essentially the question here is if there's indeed a trademark. Unfortunately it's
something only lawyers with real-world experience can answer.

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John Trader

13 years ago

Definitely consult an attorney before doing anything else. Most attorneys will hear your case and offer an opinion of whether they wish to represent you, and even offer a way out for you without even taking you as a client. In other words, free adviced from an informed legal professional. Much better than you can get from any of us here, unless we have a trademark lawyer in the room...?

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danifae 13 years ago

he did not answered to my friend's call, or to my email.....
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John Trader

13 years ago

If they do not own the trademark, then why don't you apply for and get one, and then send THEM a cease & desist letter? Lol I am NOT offering legal advice, merely my non-professional opinion. Please -- hire or at least consult with a lawyer.

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Frank2

13 years ago

Originally Posted by John Trader

If they do not own the trademark, then why don't you apply for and get one, and then send THEM a cease & desist letter? Lol I am NOT offering legal advice, merely my non-professional opinion. Please -- hire or at least consult with a lawyer.

Something is screwed up. A trademark registration costs about $275 or something. If the fellow posting here had a few bucks, he would register it with the USPTO. If the attorneys are paying attention - they might object.

Any company with any common sense would have filed a trademark and it would be already done.

The only reason they would not file it is if another company already had the trademark.

This is weird and BS.

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Latsyrc

13 years ago

Originally Posted by Frank2

Something is screwed up. A trademark registration costs about $275 or something. If the fellow posting here had a few bucks, he would register it with the USPTO. If the attorneys are paying attention - they might object.

Any company with any common sense would have filed a trademark and it would be already done.

The only reason they would not file it is if another company already had the trademark.

This is weird and BS.

It takes over a year to get a trademark approved, so that doesn't mean they aren't going that route.

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Palusko

13 years ago

Well, looks that I was wrong (and so were other people). Here's what I found (Note ACPA=Anti-cybersquatting Consumer Protection Act):

Question: What if I don't live in the US? Can I still lose my domain name under the ACPA?

Answer: Indeed, you can. If the mark owner is protected by US law (uses the mark in the US) then that mark owner can bring an ACPA action in a US court regardless of the domain holder's location. If the domain holder fails to show up in court, s/he may lose by default, in which case the US court will issue an order to the domain registrar or registry to cancel or transfer the domain registration to the mark owner. If the domain holder cannot be identified or located, the mark owner can bring an in rem action to obtain the domain name. But the court must have authority over the registry or registrar holding the domain registration. All .com, .org and .net domain names are subject to the ACPA because the registry, Network Solutions, is located in the US. If the court does not have jurisdiction over the domain name registrar or registry, however, it will be difficult for the court to enforce its order outside the US. If neither the domain holder nor the mark owner has any contact in the US, then it isn't likely either can seek protection under US domestic laws, however, this is a question decided under treaties that govern international protection of trademarks. In such cases, the UDRP may be a more useful forum for the trademark owner to use.

Hope this helps. More at http://www.chillingeffects.org/domain/faq.cgi

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Doug Terry

13 years ago

Most of the replies you have received suggest you consult a lawyer and that is the FIRST thing you need to do and definitely do not reply to them yourself.

Rest easy though because in many cases lawyers send C&D letters with baseless claims that when challenged, fall apart. I received one such letter from someone claiming i had infringed their TD and a quick search of the registered trademarks showed their TD was registered in a completely different category. Consequently, i sent them a very short reply and they crawled back into their box.

Having said all that you need to ask a lawyer first before responding.

Good luck

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Michele Buch

13 years ago

My guess is that they want your domain, see that it is about to expire, and are sending you this letter to intimidate you.

I'd renew the domain name and offer to sell it to them for $997.
They don't have a registered trademark, so they don't have a leg to stand on.
Good cookie or something similar is generic.

"Using a trademark in a domain name is not an automatic infringement of that trademark. A key question is whether the domain name itself leads to consumer confusion as to who is responsible for that website." That's a quote from a document titled "Trademark Issues in Internet Marketing" in the Internet Marketing Law Center, started and run by WF member kindsvater (Brian). (It's a good resource. Membership was a one-time fee of $49 for a lifetime when I joined.)

For those guys to have a case, 3 things are necessary:
1. You are using the domain in "bad faith".

2. Using the domain name causes confusion because it is identical or nearly so to the trademarked name to which the complainer has rights (and generally, that means registered trademark).

3. The person holding the domain does not have any rights to the domain name (this doesn't make sense to me).

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) handles complaints.

Please keep us posted on what you decide to do and the outcome.
Good luck!
Michele

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CheapTrafficDude

13 years ago

The following does not consist of legal advice...

First, go look at the company in question's TOS. They must by law provide sufficient information about their trademark then you can request further information with the trademark office to see what the trademark is REALLY for. More often than none, some companies just want to cause sh*t and will play the fear card.

There is a difference between a REGISTERED trademark and just using the TM symbol. For example, CocaCola is a registered trademark and the PolarBear or Santa Clause would just be a trademark, it's what people will associate with the product or company name. Same thing with Google, which is a registered trademarked brand name and how many websites do you see like googledomination[dot]com or whatever. By law, the only thing Google can do is request you take down or give up the domain but I've never heard anything like such.

The major issue is if you would have a domain name like www[dot]googlesearchengines[dot]com since Google is well known for their search engine (duh LOL) and if you were making a profit that way then you might be faced with a litigation lawsuit since they are not making a profit from you using their name. By law, you can register any domain name you want and large corporations have better things to do that going after average Joes like us trying to make a few bucks.

What their concern is if you would start making 7-8 figures and not giving them anything back. If your domain was something like www[dot]googleadwordsfordummies[dot]com then you're essentially providing value, which Google wants, as well as some potential customers for them. If you are overly concerned then speak with a legal expert in the internet field to see what your rights are. Another option to protect yourself would be to incorporate, this way, if you get sued, the company would take the blow and you'd protect your own assets to a certain extent as you can sell the domain to your company.

Again, the keyword here is "TRADEMARK". Anyone can put a TM at the end of their website, that's not a legal thing. For example, my personal trademark is my big black cowboy hat and I can't legally sue anyone who wears one just like CocaCola can't sue anyone who puts a picture of a cute polar bear on their website, the problem in this case would be putting a cute polar bear drinking a CocaCola.

Research in this is of the essence. If you find nowhere a clause that using "good bread" in a domain name then they don't have a case against you because that would be failure to provide adequate trademark use information. If anything, if I were you, I'd counter sue for all the work I put in and evaluate it @ $25 per hours, for 12 hours a day over the last 3 years. State that you're willing to give away the domain name ONLY if your time will be compensated.

If you do find a clause about domain names that explains what can and can't be done with the trademark then you should just let the domain go. Also, contact the "client" in question, sounds to me like a "hospital chaser". I you show resilience, the "client" will likely let it go because it would cost them more to fight with you than getting a domain name.

This s*cks, it really does... People are just "sue happy", just sounds like someone who's desperate for cash and if the site earned you $100 per year and they're willing to pay a lawyer hundreds of dollars to harass you, something doesn't seem right to me TBQH. I wouldn't recommend you ignore the lawyers, you don't want to be served with court papers. Remember...

You have the right to remain silent. Simply reply: "I will provide you with the information you asked for after and ONLY after I speak with my lawyer and/or get legal advice. Please forward to me a copy of the complaint from your client so I can bring it to a legal representative. This is all I have to say at this time and my lawyers will be in touch with you."

-Take the bull by the horns, lawyers fear those who [or appear] know what they're doing

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JBrooks

13 years ago

I often get emails from dodgy china companies saying they have a client who wants to trademark the term xxxxx-xxxxx and then proceed to say but since you have the domain we are obliged to offer you the chance to trademark the term first...blah blah blah....

have you thought about seeing if there are other domains with the same keywords and then contact the respective owners to see if they have received something similar. maybe you'll see they are owned by the company in question in which case pretty good clue that its legit.

either way. good luck. don't forget to post how it turns out.

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JBrooks

13 years ago

out of interest did you have who is privacy added to your domain? ie did they contact you directly or through your host?

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Meharis 13 years ago

Danifae,
No legal advice implied. Just my own form of reasoning.
Seems to me that this issue will be going forever.
Nothing wrong with it but, you may end up exhausted.
What's the worst that could happen? They initiate a law suit; right?
In that case, I would replay to them some where along the lines of
"Cheaptrafficdude" suggestion in posting # 72 and see what happen.
You all ways have time to pull back or checking up with a lawyer.
Meharis
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danifae 13 years ago

Originally Posted by dealme

out of interest did you have who is privacy added to your domain? ie did they contact you directly or through your host?

Unfortunately I didn't have the who is privacy for it. I have for most of my sites and I was going to ask for it while renewing, as I did for 3 domains I renewed on March.

I contacted various USA attorneys. Only 2 answered, asking for much more money I earned in 3 years with that domain to answer to that letter. I still have many doubts and I'm not sure how to answer. I feel afraid because that attorney is a big company and I feel they could decide to go on....
I don't know if it's better to make an USA attorney answer them, or one in my country (this is a cheaper option for me...)
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misterkailo

13 years ago

I am 95% sure this is just a scam. You send the site to this person and BAM.. now he is making money and you got burned.

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saniaakter

Banned 13 years ago

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mr2monster

13 years ago

I only read a few responses, but I highly doubt that a legal letter would come via email...

I've been wrong before. I'll be wrong again. But that's my gut.

If you've only made 30 bucks from it in 3 years, is it really worth holding onto anyway?

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Palusko

13 years ago

Believe me, they can indeed be real (not to say that this one is or isn't). I received a letter similar to this one about 2 years ago because my domain name had the word "Olympic" in it. The email was followed by an email from GoDaddy a day later (I guess they informed GoDaddy too) informing me that my domain cannot be parked with them.

So yes, emails like this one can be for real. If they have a real chance to actually proceed and win, that's another story, but they sure can try. It's not a legal letter in that it is not in any way binding to you, but an email can be the first point of contact they make with you, letting you know that they are pursuing a legal action against you.

Originally Posted by mr2monster

I only read a few responses, but I highly doubt that a legal letter would come via email...

I've been wrong before. I'll be wrong again. But that's my gut.

If you've only made 30 bucks from it in 3 years, is it really worth holding onto anyway?

Thanks

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John Trader

13 years ago

Originally Posted by mr2monster

I only read a few responses, but I highly doubt that a legal letter would come via email...

I've been wrong before. I'll be wrong again. But that's my gut.

If you've only made 30 bucks from it in 3 years, is it really worth holding onto anyway?

Exactly. There doesn't even seem to be a business at stake here, from the standpoint of the person who's being intimidated. $30 in 3 years, domain about to expire... regardless of the trademark issue, what's the point of even renewing this domain?

Perhaps there is implied value in the domain due to the threat of someone claiming an infringement, but offering it for sale under these circumstances seems risky at best (perhaps even foolish) and best handled by lawyers.

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Trademark violation of which I was unaware

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