Trademark question - No Cease and Desist so far

16 replies
Hello,
I'm new here, found the forum by searching for cease and desist.
I have a company with several years and we have rebranded recently to a new name and new domain.
Maybe we didn't do proper due diligence because it was a rush to change the domain and start fresh because we needed.
We also submitted a registration request with our country trademark office and everything was going well until today. We checked that there was opposition and was some company that had a name like ours but a different letter (our name is short). They have a lot of international registrations and one of them has one of the same NICE class as our attempted registration. Our businesses are quite different but they registered a lot of classes and in one their registrations it included ours.
We did not receive the notification yet with what they claim, so we cannot respond yet. But we believe they may claim some phonetic confusion. My lawyer is on vacation and I'm in distress.
This rebranding hurted us very bad and just now that our rankings are starting to recover I am afraid we will have to change the domain again. It looks ridiculous to our audience (hundreds of thousands) that we are changing names every 2 or 3 months...........
But what worries me more is that if they send a Cease and Desist letter and we have to hand them the domain, our work for 5 years will be lost and the company will not survive since google brings more than half the traffic, which would evaporate overnight and we have employees and rents to pay.
What should I do?
Quickly find another name and register the domain it and 301 everything again?
Quickly find another name and register the domain AND the brand before 301 everything?
Wait to see what is their opposition and then reply?
Maybe try to negociate with them? Begging them to let us use this name? The difference in the name is like this:
theirs: abcde
ours: abcdo

Does it seem likely we can win this? If they sue us what can they claim and much can it be?
The patents office did not send the notification yet. Can we be calm or must we act immediately?
Should I summon the lawyer back from his vacations or can this wait another week?
We are in Europe they are in the USA, but they are active in some european countries.
I just get so frustrated because after weeks of searching for a nice name and domain and I bought it for around 1k and worked on it for 2 months now this happens.
#cease #desist #question #trademark
  • The quick easy fix would be to get a new domain name and do a 301 redirect from the contested domain name to the new one. That way the web browser shows the new domain name and not the contested one. I'm not a lawyer, but this makes sense to me. This would also pass along any domain juice to the new domain.

    Mainly though, I would just wait and see. If you have not received a C&D yet, no need to take action...

    Wait to see if you get a C&D and pay then an trademark lawyer a couple hundred bucks to look it over.
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  • Profile picture of the author SteHughes90
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    I have a friend who went through this situation with a household name brand.

    He rolled over, for 2 reasons:
    1. The big brand had much more money, he could not compete with their lawyers
    2. It was simply more effort than its worth, it would have taken months of his time and it would have put him behind anyway due to all the time it would take from him running his business.

    If I were you, think of a new name.
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    • Profile picture of the author solyaris
      Thanks for the replies. Isn't a bit pathethic and unprofessional for us to go through 2 rebrands in a 6 months period?
      Will we be penalized by google? Last rebrand hit our traffic in about 30% (which has been recovering). This equates around 6 digits losses in sales
      I will start looking for new names on sedo anyway...
      But there is no garantee that some company with a somewhat similar name won't oppose our registration again. So what happens next? I just keep rebranding every 3 months? Lol ;_;
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      • Profile picture of the author kk075
        Originally Posted by solyaris View Post

        Thanks for the replies. Isn't a bit pathethic and unprofessional for us to go through 2 rebrands in a 6 months period?
        Will we be penalized by google? Last rebrand hit our traffic in about 30% (which has been recovering). This equates around 6 digits losses in sales
        I will start looking for new names on sedo anyway...
        But there is no garantee that some company with a somewhat similar name won't oppose our registration again. So what happens next? I just keep rebranding every 3 months? Lol ;_;
        This isn't about being professional, it's about protecting your company. If someone has the name trademarked and you're in a similar enough industry, then you're playing with fire. So change the name and tell your customers why you're doing it. Although some may think that your lawyer messed up and you guys are dumb, I don't see that as a deal-breaker for most if you deliver great products and services. Trust your customers and be honest, they will understand.

        With that said, I don't think it's time for you to panic yet. Unless you're selling the exact same products as the other company and/or making your logo virtually identical, then a judge is not going to issue an immediate cease and desist. And even when that day does come (if it comes), it's not like they just get to take your online assets....it means to stop using that name.

        So just use this time to find a new name, don't make the same mistake as last time, and you should come out of this okay. As others have said, a 301 redirect is all you need and your site rankings should be fine.
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        • Profile picture of the author Kay King
          I have a company with several years and we have rebranded recently to a new name and new domain.

          Maybe we didn't do proper due diligence because it was a rush to change the domain and start fresh because we needed.
          1. WHY would you rebrand a company that's several years old - WHY would you move to a different domain?

          2. WHY was there a rush - and "start fresh because we needed...." WHAT???

          You initial premise doesn't make sense. Someone with a known company doesn't usually jump quickly to rebrand a company name - change domain, etc. When you move too fast - this is what happens.

          Does it seem likely we can win this?
          Not really - your defense is "we were in a hurry so didn't check trademark". Not a fight I'd want to engage in and could be quite expensive.

          You made a mistake - it happens. Best move is to find a new name - RESEARCH it carefully before going with it - then get back to building your business.
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      • Profile picture of the author The Cypher
        Originally Posted by solyaris View Post

        Will we be penalized by google? Last rebrand hit our traffic in about 30% (which has been recovering). This equates around 6 digits losses in sales
        If this is true... Then before your rebrand you were making plenty of sales. An you had plenty of money. About $200,000 or so at the least. You should have protected yourself better and if this is racking your brain get your lawyer on the phone.

        Seriously if you're making that much why in the hell would you come to the WF of all places to ask legal advice?

        I smell lots of BS
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  • Profile picture of the author Sid Hale
    Don't Panic!

    Maybe I overlooked it, but... Is their name even trademarked?

    The example you gave (abcde vs. abcdo) insinuates that the company name may be an abbreviation of something else. An acronym. If that is, indeed, the case and there is just one letter difference - there is no infringement that would (IMHO) be held against you in court.

    Best to educate yourself...

    http://www.uspto.gov/trademarks-gett...ademark-basics
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    • Profile picture of the author solyaris
      Originally Posted by Sid Hale View Post

      Don't Panic!

      Maybe I overlooked it, but... Is their name even trademarked?

      The example you gave (abcde vs. abcdo) insinuates that the company name may be an abbreviation of something else. An acronym. If that is, indeed, the case and there is just one letter difference - there is no infringement that would (IMHO) be held against you in court.

      Best to educate yourself...

      Trademark Basics | USPTO
      Oh it's not a acronym. I'll try to make an analogy as close to reality without actually revealing my company:

      1. We rebranded as Hondu and HONDA is opposing our registration.
      2. They manufacture and sell cars and their registration includes "Commerce of cars". But their registration includes a lot of categories (NICE classes) and one is "Printing of travel magazines", altought they don't actually do that, or if they do it represents less than 1% of their business.
      3. Our main activity is selling travel packages online but the lawyer tried to register us as "Printing of travel magazines", when he should have tried register as "Commerce of travelling packages".
      4. I guess the lawyer choose that category because we also have our own magazine named "Hondu Magazine".
      5. To make things more confusing we don't only sell travel packages but also sell car parts (not Honda, but Citroen, Mercedes, etc) and thousands of other random stuff, although the car parts represents less than 1% of our business, while 99% is still sale of travel packages and other stuff.
      6. There was never intended trademark infringement. We did not have any benefit in being associated with them and I think they don't have any loss. The sound HONDA and HONDU for me sounds different but I don't know how a judge will decide. Our patent office has a phonetic matching (algorithmic) and it says 40%... The logos are totally different, like this:
      http://www.zeroto60times.com/logos/h...ogo-emblem.jpg
      http://i.imgur.com/CHp8oIH.png
      7. For those questioning the reality of this case, I'm not going to try to convince you this is real, I just want to remind you I have no motive to come here bullshitting you. Our annual turnover is in the 7 figures, the opposing company in the 9 figures, so there is still a huge difference.

      Thanks a lot for all the feedback, I will need to check this with the lawyer and preemptively find a new domain.
      I hope the clarification above can allow some more informed replies. They will be appreciated.


      @ Sid Hale : Thanks for sharing the video is very insightful. It says the domain can be a trademark. So if I apply to register Hondu.com trademark maybe this will be granted easier?

      Thanks
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      • Profile picture of the author professorrosado
        Originally Posted by solyaris View Post

        Oh it's not a acronym. I'll try to make an analogy as close to reality without actually revealing my company:

        1. We rebranded as Hondu and HONDA is opposing our registration.
        2. They manufacture and sell cars and their registration includes "Commerce of cars". But their registration includes a lot of categories (NICE classes) and one is "Printing of travel magazines", altought they don't actually do that, or if they do it represents less than 1% of their business.
        3. Our main activity is selling travel packages online but the lawyer tried to register us as "Printing of travel magazines", when he should have tried register as "Commerce of travelling packages".
        4. I guess the lawyer choose that category because we also have our own magazine named "Hondu Magazine".
        5. To make things more confusing we don't only sell travel packages but also sell car parts (not Honda, but Citroen, Mercedes, etc) and thousands of other random stuff, although the car parts represents less than 1% of our business, while 99% is still sale of travel packages and other stuff.
        6. There was never intended trademark infringement. We did not have any benefit in being associated with them and I think they don't have any loss. The sound HONDA and HONDU for me sounds different but I don't know how a judge will decide. Our patent office has a phonetic matching (algorithmic) and it says 40%... The logos are totally different, like this:
        http://www.zeroto60times.com/logos/h...ogo-emblem.jpg
        http://i.imgur.com/CHp8oIH.png
        7. For those questioning the reality of this case, I'm not going to try to convince you this is real, I just want to remind you I have no motive to come here bullshitting you. Our annual turnover is in the 7 figures, the opposing company in the 9 figures, so there is still a huge difference.
        Now this puts things in a different light. More information allows us to answer more to the point. You definitely have cause to rely heavily on your lawyers on this.

        As time goes on, phonetics may play significantly greater roles than typing / misspelling does today. The large companies may have a vested interest in gaining as much phonetic leverage as they can for their brands.

        So they will fight you on this (unless they're complete idiots). But you may have substantial weight going for your side of this issue. It is time to fly high and you'll need to start fighting some battles: you will win and lose some - welcome to Big Business!
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  • Profile picture of the author stackman
    A cease-and-desist letter means nothing in itself. Unless the company or party issuing the letter is bigger, has more money, and has more lawyers than you, you have nothing to worry about. I have written such letters to companies bigger than mine and they were simply ignored. So, unless I was willing to spend many thousands of dollars defending my rights, it meant nothing.
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  • Profile picture of the author David Beroff
    Originally Posted by solyaris View Post

    ...we didn't do proper due diligence because it was a rush to change the domain and start fresh because we needed...
    So let me get this straight: You are claiming annual sales of over a million, (30% of a few months is "six figures"), and yet you didn't spend the time and money with a competent international trademark attorney to protect your entire company? Now you are coming to a forum of random Internet marketing people to ask for solid legal advice?

    Yeah, something sure doesn't smell right here. If by chance you are telling the truth, go out and hire the right lawyer this time, and not your brother-in-law's one-person law firm.
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    • Profile picture of the author professorrosado
      Originally Posted by David Beroff View Post

      So let me get this straight: You are claiming annual sales of over a million, (30% of a few months is "six figures"), and yet you didn't spend the time and money with a competent international trademark attorney to protect your entire company? Now you are coming to a forum of random Internet marketing people to ask for solid legal advice?
      Absolutely!

      Judging by the reasons you gave for not wanting to change the name again...I simply would. Google can change their algorithms next month and then where is your worry about losing SEO juice?

      It also doesn't seem that your name is all that important to your business as a brand.

      I would suggest focusing on branding your business properly which will give your company a unique brand, name and domain regardless if you can win this thing or not.
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  • Profile picture of the author KenW3
    Originally Posted by solyaris View Post

    But what worries me more is that if they send a Cease and Desist letter and we have to hand them the domain
    No company can be compelled to hand over a domain without going through the UDRP process. The other company can file, but that takes time to go through arbitration (and they may not win).

    Do not ever hand over your domain name to anyone. If ICANN rules in their favor, your registrar will comply with the decision.

    Link Uniform Domain-Name Dispute Resolution Policy

    P.S. Use an attorney familiar with this UDRP process, then ask your counsel if it is worth going to arbitration based upon claims made by the other company.
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  • Profile picture of the author kilgore
    Originally Posted by solyaris View Post

    Should I summon the lawyer back from his vacations or can this wait another week?
    While I agree that this whole situation seems... fishy, I'll assume that the OP is being above board here.

    To that end, I'll just say that nobody here knows anything that can help you. We aren't lawyers. We don't have any special knowledge of your company or the company that you may or may not be infringing on.

    But what I do know is that if you haven't been given a "Cease and Desist" letter, even if you got one today (which is extremely unlikely over the weekend), you could easily wait a week to respond. After all a Cease and Desist letter doesn't actually have any legal force behind it -- it's just a note from one party to another demanding that some action be taken. But I could send you a letter tomorrow telling you I want you to send me $1 million because I'm emotionally scarred because I think your posts here are cluttered and hard to read. It doesn't mean what I'm demanding is right or will win in court.

    Speaking of court, that's the only place that any action against you can have any force. But to do that this company would first have to file a lawsuit against you -- which they likely won't do until giving you time to respond to their Cease and Desist letter (which they still haven't sent). And even if they had filed a lawsuit against you, you'd likely have 30 days to respond to their complaint and even then that's only the very beginning of a very, very long process.

    The point is one week will not kill you. Let your lawyer enjoy his vacation. And as for you, drink a little less coffee, get a little more sleep and relax. Talk to your attorney upon his return. You may have plenty to worry about -- or you may have nothing at all to worry about. Your lawyer can help work you through your options soon. Regardless, there's certainly no reason to panic.
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  • Profile picture of the author salegurus
    Love this place....
    Lets see:

    I own a company which has an annual turnover exceeding $1M
    I'm in legal trouble but my Attorney is on vacation (Apparently somewhere remote because i can't phone him for advice)
    I do a Google search and find WF so i throw the dice hoping to find expert legal advice
    I get advice/opinion from random people some who genuinely think they are experts in every field imaginable.

    Ummm, do i take said advice or try my luck on another forum?

    Whaaaaat? And this guy owns a company which trades in the millions.........
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