Trademark violation of which I was unaware

by 80 comments
I read other threads about trademark violations but I couldn't find the answers I need. My situation is slightly different.

I have a site the domain of which is going to expire in a forthnight. I was wondering whether to renew it, because in 3 years I only earned €30 with Adsense and some €200 with ebay. A real waste of time (and this is not even one of my worst sites....)

Anyway, 2 days ago I received a letter from an attorney stating I violated the trademark of their client.

Honestly, I did not really know that part of the keywords I used in the domain was a trademark. I considered it only as an expression (it is something like "good bread machine" being the 2 words "good bread" the trademark).

The site was optimized for that sort of products, in particular for a different brand and in 3 years I had very little visits in general but most of all very little through the trademarked keywords.

Now they asked me:

"(1) cease and desist from further use in any way of the XXXXX XXXXX™
mark;
(2) transfer to our client the domain name www.xxxxxxxxxxx.com;
(3) provide information and substantiating documentation as to any revenue you have realized on account of or through, in whole or part, your infringing use of the XXXXX XXXXX™ mark as set forth herein, including without limitation any such revenue realized through the website www.XXXXXXXXX.com, and account and remit to us the full amount of such revenues;
(4) provide information and substantiating documentation regarding any other party in the infringing uses of the XXXXXX XXXXXXX™ mark as set forth herein;
and
(5) agree to enter a stipulated final judgment and permanent injunction in this matter.

Except for the www.XXXXXXXXXXXXXXX.com website, which must be changed immediately, XXXXXXXXXX is willing to provide you a reasonable period of time, not to exceed two weeks, in which to effect these changes."

I have no problems in transferring the domain to their client, apart from some technical difficulties because I cannot understand the registrar's instructions, and have already taken down all my files.

But before answering them I wonder about the economical requests. Will they really want the money? How could I show them the revenues? shall I send them a screenshot of my ebay affiliate account??? What about all the money I spent for the site?
What does the (5) means??

Had anyone ever replied in a way not to have to pay? Can you share your experience?
I really need your help!
Thank's in advance

edit: some spelling corrections
#internet marketing #domain brand #trademark #unaware #violation
  • Profile picture of the author Michael Mayo
    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
  • Profile picture of the author sbucciarel
    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.
    • Profile picture of the author 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!
  • Profile picture of the author gslauen
    Yes, perhaps just let it go. They won't have a case then.
  • Profile picture of the author Mo Goulet
    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.
    • Profile picture of the author webjedi
      Originally Posted by proapc View Post

      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
  • Profile picture of the author seasoned
    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
  • Profile picture of the author Michael Mayo
    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
    • Profile picture of the author 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
  • Profile picture of the author BulletheadX
    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"
  • Profile picture of the author Floyd Fisher
    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.
  • Profile picture of the author HeySal
    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.
  • Profile picture of the author AdamCBR
    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.
    • Profile picture of the author webjedi
      Originally Posted by AdamCBR View Post

      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
  • Profile picture of the author AdamCBR
    OR...reply requesting for proof of trademark, before u even consider anything.
  • Profile picture of the author txconx
    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.
    • Profile picture of the author danifae
      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!!
  • Profile picture of the author sbucciarel
    TESS is where you search for trademarks in US
    Trademark Search - TESS
  • Profile picture of the author CDarklock
    Originally Posted by danifae View Post

    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.
  • Profile picture of the author ratracegrad
    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
    • Profile picture of the author BulletheadX
      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
  • Profile picture of the author Sarah Bosen
    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.
  • Profile picture of the author gar
    i really did not know about this though....thats crazy
  • Profile picture of the author seasoned
    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
  • Profile picture of the author ClickPimpsta
    definitely get advice from an attorney.
  • Profile picture of the author Kate Davies
    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
    • Profile picture of the author danifae
      Originally Posted by digileaf View Post

      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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