Trademark issue?

by yipbop

Posted: 12 years ago 15 replies

INTERNET MARKETING

Hello Warriors,

I have a question as to what I should do about a possible trademark situation.

I started a niche website less than 2 years ago selling ebay products using phpbay plugin. It's a wordpress site and I wrote my own articles backing up the products sold. I'm not getting a lot of business, but it is paying for itself.

A few days ago I received an email that stated...

Infringement of Trademark [my website name]

Registrant:
[my information]

Please be advised that you are marketing and selling a product similar to our brand The [my website name], using our Trademarked name xxxxxxxxx in your marketing efforts. This could and is causing confusion in the eyes and minds of consumers.

We ask that you immediately cease and desist including removing your website [my website address (dot info)] or we will take further legal action to protect our brand.

Sincerely,

V.P. Operations / Product Development

I checked and they are a website selling similar products and their name is trade mark.

What can I do about this?

Thanks!

#issue #trademark

Richard Tunnah 12 years ago

The only sure fire answer to this is to discuss this with a trademark lawyer. However if you are upsetting a large company your fight could get very expensive quickly so I think you need to carefully decide whether investing thousands of dollars and time is worth it?

Rich
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Alexa Smith Banned 12 years ago

Originally Posted by yipbop

I checked and they are a website selling similar products and their name is trade mark.

What can I do about this?

You can get legal advice, of course (though not here!) ... but if you're really using their trademark in your domain-name, and selling something similar, i.e. competing with them, it might perhaps be as well just to comply and apologise to them? The "Cease & Desist" you have at the moment is surely a lot better than a lawsuit and a claim for any money you've ever made from the site and/or additional damages? :confused:
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kindsvater 12 years ago

Without knowing the trademark, domain, and seeing what is happening, no one can suggest anything except either shutting down or getting an attorney to review the situation.

.
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- afilmarket 12 years ago
  
  Firstly, I'd like to ask, where are you located? I have a little experience with TMing, as I had to trademark my logo of my not-for-profit.
  
  I agree with Alexa. It does sound like a pretty clear cut instance of Trade Mark violation. The best thing to do, in my opinion, would be to go along with what they request.
  
  How important is the brand name in what you're selling? If it's a fairly generic item, I imagine making these changes wouldn't be too harmful to your business.
  
  If you're in the UK, here's a useful link, where you can check to see if there's already a registered business with the name you propose to use:
  
  Companies House
  
  Thanks
  
  1 reply
  
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  yipbop 12 years ago
  
  I'm in Israel. the Trade Mark is Green Bottle
  
  Thanks
  
  1 reply
  
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  afilmarket 12 years ago
  
  Originally Posted by yipbop
  
  I'm in Israel. the Trade Mark is Green Bottle
  
  Use justanswer.com. It's an online legal service. I used when I sued an airline for breach of contract. They were excellent, and it only cost me $20.
  
  It's worth it I think.
  
  Or, just learn for next time. I've never heard of Green Bottle, so it sounds like a genuine mistake to make. Before you register a domain next time, just check online to see if there is a company who have registered it as a trademark.
  
  Thanks
  
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mosthost

12 years ago

Search Google and see if their trademark is registered. If it is, then take the damn site down because you F'd up.

You can't register domains with other people's trademarks in them, regardless of how many examples you see.

Thanks
1 reply

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davezan

12 years ago

Originally Posted by mosthost

You can't register domains with other people's trademarks in them, regardless of how many examples you see.

Sure you can. Just depends how it's going to be used, though using it to ride on
its trademark namesake is indeed generally a no-no.

Thanks
1 reply

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David

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mosthost

12 years ago

Originally Posted by davezan

Sure you can. Just depends how it's going to be used, though using it to ride on
its trademark namesake is indeed generally a no-no.

In general people register the trademarked domain to set up and affiliate or Adsense website targeting the companies products.

Which scenario are you referring to?

Thanks
2 replies

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Richard Tunnah

12 years ago

Originally Posted by mosthost

In general people register the trademarked domain to set up and affiliate or Adsense website targeting the companies products.

Which scenario are you referring to?

Dave I believe is referring to how you use a domain. Purchasing apple.com and having a blog about apples is diferent than having an affliate site selling apple computers, ipads or ipods.
Obviously there are non generic domains that you'll struggle to use without issues like ones with ebay in them for instance.

Rich

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davezan

12 years ago

Originally Posted by mosthost

In general people register the trademarked domain to set up and affiliate or Adsense website targeting the companies products.

Which scenario are you referring to?

Originally Posted by Richard Tunnah

What Rich explained is one of few exceptional scenarios. Here are two extras:

Trademark Law Basics

Technology & Marketing Law Blog: Funky Ninth Circuit Opinion on Domain Names and Nominative Use--Toyota v. Tabari

While not limited, this essentially depends on strength of trademark (if any) as
well as consumer behavior.

Unfortunately, OP, you best seek a lawyer with real-world experience in these
things if you truly want "legal advice". People here can suggest, but that's all.

Thanks

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David

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Tim Franklin 12 years ago

This is not a legal opinion, if you need legal advise get it and please do not follow any legal advise proposed on this forum,

I saw one post in particular that would cause you a great deal of grief if you followed that advise, and or opinion, just dont do it,

To be more specific, never Ever, (NEVER) admit, or indicate, that your in the wrong, never Ever, Ever, apologize, that's just stupid and will get your butt in court its an admission, never ever do it ...

Get legal Advise, it sounds like you need it, you can get a professional opinion at several places online, (run by actual attorneys) the average fee is usually about $50 USD, not bad for being able to sleep at night.

But see no one here can really give you any kind of advice because they do not know who it is, nor what your domain name is, without knowing at least the minimum factual information no one can even give you an opinion.

Best thing you can do is get legal advice from a competent, legal mind in your area.
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Green Moon 12 years ago

The first question is whether the site and the work you have done is worth the cost of hiring an attorney. If the answer to that question is no, then whether they have a good trademark claim or not is nearly irrelevant. In that case, do what they ask and move on.

If the answer to the first question is that there is enough value in the website for you to spend a little money talking to a trademark attorney, then do so and follow his or her advice.
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Entrecon 12 years ago

Even if there was someone on here with a legal degree, I don't know as you have even provided enough information to determine what your violation is. I do a Google search for green bottle and get a variety of results. Your first post also indicates you are using the trademarked name, but I can't tell if it is part of your domain name or not.
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angela99

12 years ago

Originally Posted by yipbop

Hello Warriors,

I have a question as to what I should do about a possible trademark situation.

...

I checked and they are a website selling similar products and their name is trade mark.

What can I do about this?

Thanks!

(Sigh) Do what they say. You've infringed on their trademark.

See: Trademark - Wikipedia, the free encyclopedia

The section, "Maintaining Rights", says:

It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential. This is designed to prevent owners from continually being tied up in litigation for fear of cancellation. An owner can at any time commence action for infringement against a third party as long as it had not previously notified the third party of its discontent following third party use and then failed to take action within a reasonable period of time (called acquiescence).

You've been notified of the infringement.

The next step is ACTION on the part of the trademark holder.

They've notified you and warned you to cease and desist. If you don't they MUST take action, or they're not defending their mark.

See a lawyer.

I can't see that it will do much good, however. You've used someone else's mark, you're aware of it, so you have no defense, sadly.

In your shoes, I'd consider myself lucky. They could simply have started action for damages.

Cheers

Angela

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Trademark issue?

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