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Cease and desist for my website

by zclevenger
33 replies
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So I got a call from a company that owns the website spinning dot com and they said I need to immediately transfer my site to them and shut down my facebook page because they have trademarked the word "spinning" and it is used in my site bestspinningbikesforsale dot com. It's just a niche site that is ranked well and brings in some steady cash from adsense/Amazon. I think I pissed them off by ranking higher than them. First off, anybody have experience with this? I'm going to send whatever I get from the company to my dad so he can run it by his lawyer. While I would comply if I indeed needed to, I have put a lot of time into this to get it where it is now. SO, if I do have to get rid of it, what would be the best way to try and save my site? New domain name with all the content from this site? Thanks for any advice!
  • Profile picture of the author HeySal
    I'm not a lawyer, but that doesn't sound like a trademark violation to me. I don't believe they understand their "trademark". You can't trademark a word (that is a dictionary word), then tell people they can't use it in ANY context or combination. Now if it's a made up word, such as "google", that's a totally different ballgame.

    If your site might be mistaken for theirs and you have similar products they might have grounds. You need to contact a trademark lawyer. Sounds to me like they are making an attempt to hijack your site. If your lawyer tells you they are trying to scam you, and you have to pay for his consultation - have the lawyer send that person the bill for the legal fee. LMAO
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    • Profile picture of the author Lloyd Buchinski
      I agree with Sal's points. With any luck someone just got a little more enthusiastic than they could handle and they are having second thoughts now.

      And if someone pops up and says 'don't use the forum for legal advice' (usually at least one in each of these topics), reddit has a neat section for legal advice, at http://www.reddit.com/r/legaladvice

      I would not take any of it as gospel without double checking, but these topics very often bring out angles that I hadn't thought about. They do tend to be interesting.
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  • Profile picture of the author Dan Riffle
    From what I can tell, their trademark goes back to '92. Unless you want a legal battle, you should fork it over. I'm not a lawyer, so YMMV.

    'Spinning' Trademarked; Gyms Being Threatened For Holding Spinning Classes Sans License | Techdirt

    http://www.spinning.com/file/downloa..._one_sheet.pdf (opens in a pdf)
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  • Profile picture of the author zclevenger
    I appreciate the suggestions. In the case I need to forfeit my site, any ideas of salvaging the content? I know i'd have to start SEO over (which would blow!). New domain? Just shut it down and move on?
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    • Profile picture of the author Dan Riffle
      Originally Posted by zclevenger View Post

      I appreciate the suggestions. In the case I need to forfeit my site, any ideas of salvaging the content? I know i'd have to start SEO over (which would blow!). New domain? Just shut it down and move on?
      Beststationarybikes.com?

      Recumbent bikes?

      Just do some keyword research and adjust.

      It sucks, but them's the breaks.
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  • Profile picture of the author KingOfContentMarketing
    Companies have an obligation to enforce their mark. It appears it took them many years to attempt enforcement. Ask your lawyer if that mitigates their claim in any way.
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    • Profile picture of the author Dan Riffle
      Originally Posted by KingOfContentMarketing View Post

      Companies have an obligation to enforce their mark. It appears it took them many years to attempt enforcement. Ask your lawyer if that mitigates their claim in any way.
      While this is possible, the counterpoint is the cost of the lawsuit to prove the claim. My guess is the OP's website doesn't generate anywhere near the revenue to justify such a battle. It may not justify the cost of simply asking his attorney the question.
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      • Profile picture of the author zclevenger
        Originally Posted by Dan Riffle View Post

        While this is possible, the counterpoint is the cost of the lawsuit to prove the claim. My guess is the OP's website doesn't generate anywhere near the revenue to justify such a battle. It may not justify the cost of simply asking his attorney the question.
        I will definitely be asking my attorney (IF I receive something). Why not?! Besides, they said they would be sending me a cease and desist letter "in about 10 minutes". That was about 3 hours ago. Although unlikely, they could just be trying to intimidate me. I will keep doing my thing until they send me something official. You guys have been a great help. Much appreciated.
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  • Profile picture of the author meepo
    WTF so does that mean all these sites are in violation of this trademark?

    https://encrypted.google.com/#q=yarn+spinning&start=10

    edit: get a lawyer, consult with attorney, pronto

    double edit: ok NVM... the trademark is applicable to a specific industry and/or product type.
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    • Profile picture of the author Dan Riffle
      Originally Posted by meepo View Post

      WTF so does that mean all these sites are in violation of this trademark?

      https://encrypted.google.com/#q=yarn+spinning&start=10

      edit: get a lawyer, consult with attorney, pronto
      Context, Meepo, context.
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  • Profile picture of the author seasoned
    A word/phrase has to be novel or used for a SPECIFIC purpose, etc.... HEYSAL IS RIGHT!

    The WHOLE truth is that many lawyers play idiot to make some quick money, so they will argue that cars fly at warp 10, and the sky is made of chocolate if they want.

    NOW, might they win their "case"? YEP! Look at nissan v. nissan.(The "loser" is still using the name to harass them though! ) And AMAZON would have won their case over amazon.com if they fought earlier. Amazon.com built their business for years by that time.

    But HEY, chrysler, and even GM, haven't sued ford for using the term motor, or cars. INTEL sued a company for using a number to identify compatibility. The judge said "**********YOU CAN'T TRADEMARK/COPYRIGHT A NUMBER***********"! WHY? BECAUSE IT IS COMMON! So Intel started naming their processors! And GET THIS! OH, this is my FAVORITE!!!!!!! IBM vs. IBM! IBM LOST!!!!!!!!!!! YES, the IBM you may NEVER have heard of WON! IBM, the big company that created the first IBM PC, #1 computer maker in the world, etc....? The one called "International Business MACHINES"? THEY LOST!!!!!!!!

    NOW, back to YOUR case! I was surprised to hear about "spinning" and "Spinning bikes" when I first heard the term like two ******DECADES****** ago! A lawyer would have a HARD time fighting you over the term spinning bikes, and a much harder time fighting over Spinning.

    If you SHOULD be sued, make sure your lawyer goes to the big health clubs, YMCA, etc.... gets all the marketing material, goes to sears and dicks sports and gets their marketing material, and ask the arbitrator or judge for a stay while the plaintiff sues all THOSE companies for their clear infringement!

    I am not a lawyer, but I HATE those types of trolls!

    Steve
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  • Profile picture of the author Dennis Gaskill
    I'd talk to a lawyer and question the validity of their claim. Some of these companies try to grab what they can through intimidation even though they know the legal grounds they claim are questionable.

    I'm not a lawyer, nor to the best of my knowledge, have I ever been one in a past life.
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    • Profile picture of the author HeySal
      Originally Posted by Dennis Gaskill View Post

      I'd talk to a lawyer and question the validity of their claim. Some of these companies try to grab what they can through intimidation even though they know the legal grounds they claim are questionable.

      I'm not a lawyer, nor to the best of my knowledge, have I ever been one in a past life.
      Dennis you weren't. You're thinking on a very earthly level, though - you forgot that time is NOT linear as we perceive it. You are a lawyer in what we think of as the future...........word has it you're a good one, too. You'll laugh when you remember how the suit Whittaker vs Riffle turns out.

      Just remember - if you "cure" a disease, the AMA can sue the holy snot out of you......but if you "cure" a case of boredom, the AMA can't touch you for it.

      Dennis is right - spinning.com, might be looking for real estate they can capitalize on. If they have nothing to do with bikes - I'd give a good bet on their threat being intimidation. Hearing they threatened a Cease and Desist then didn't follow with it right away makes me think they might have been on the phone with THEIR lawyers seeing if they can find a way to legally grab it and not gotten a positive answer.

      I'm starting to wonder if there's charges you can press against someone for wrongfully trying to snag your real estate. Might just be funny to see intimidation artists to get slammed to a wall for it.
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  • Profile picture of the author yukon
    Banned
    Tell them you've trademarked the words cease and desist & they're in violation of:

    article:457a section:7.4.6 paragraph:11.a.8 revision:8.4

    If that doesn't work, get a lawyer.
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  • Profile picture of the author dids
    its kinda sketchy area as its a common word it may just be a scare tactic but with anything like this be careful and consult someone in law for this specific area.
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  • Profile picture of the author Dan Riffle
    Did anyone actually read the OP?

    His site is directly contextual to Mad Dogg Athletics' trademark.

    His site throws off "steady cash" - that doesn't sound like "gobs of money."

    I linked to Mad Dogg Athletics' trademark usage page. He doesn't comply.

    I also linked to an article stating Mad Dogg Athletics is going after gyms using the "spinning" term. Those gyms, which probably have more liquid resources than the OP's affiliate site, have decided to cease usage.

    Does this sound like a scenario worth a legal battle? Theoretically? Maybe. Pragmatically. No.

    Is it possible that Mad Dogg Athletics no longer has the ability to enforce its trademark? Maybe. Is it logical for the owner of an affiliate site which throws off "steady cash" to be the one who tests enforceability? Highly, highly doubtful.

    The evidence is out there that this isn't a scam.
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    • Profile picture of the author Dennis Gaskill
      Originally Posted by Dan Riffle View Post

      Did anyone actually read the OP?

      His site is directly contextual to Mad Dogg Athletics' trademark.

      - snip -

      I also linked to an article stating Mad Dogg Athletics is going after gyms using the "spinning" term. Those gyms, which probably have more liquid resources than the OP's affiliate site, have decided to cease usage.

      The evidence is out there that this isn't a scam.
      Yup, read it. If those gyms gave up without a fight, that doesn't really set any legal precedence, does it? Because they have a trademarked word doesn't mean their claims will hold up in court, does it?

      The evidence only shows that they have intimidated others into giving up use of the word, not that their claim will hold up in court. Or did I miss something?

      Maybe their claim would hold up in court, but maybe not. That's why I recommended he run it buy an attorney. Since he said he can have his dad run it by his lawyer, why not get some real legal advice?
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      • Profile picture of the author Dan Riffle
        Originally Posted by bizgrower View Post

        In this specific case, I think Riffle is spot on. (If I recall correctly, he almost became a
        lawyer.)
        Dear God, while this is true, don't go by my opinion simply because of this. My law school time just makes me dangerous.

        Originally Posted by Dennis Gaskill View Post

        Yup, read it. If those gyms gave up without a fight, that doesn't really set any legal precedence, does it?
        No, it doesn't set legal precedence. It does show that numerous companies in better financial position made the business decision not to fight.


        Because they have a trademarked word doesn't mean their claims will hold up in court, does it?
        Nope, but it most likely gives them much better right to the mark than the OP.


        The evidence only shows that they have intimidated others into giving up use of the word, not that their claim will hold up in court. Or did I miss something?
        No, you didn't miss anything, except for the cost/benefit of the situation. We're talking about an affiliate site versus an established business that must defend its mark.

        Maybe their claim would hold up in court, but maybe not. That's why I recommended he run it buy an attorney. Since he said he can have his dad run it by his lawyer, why not get some real legal advice?
        Sure, get some legal advice, provided it's extremely inexpensive. A cursory, three minute search revealed plenty evidence that Mad Dogg Athletics is for real. While the OP didn't state precisely how much the site throws off, how many hours at, say, $100 per hour would it take for a defense to be futile, especially in an environment where Google can zap any and all profits from an affiliate site at any given moment? (And a hundred bucks an hour for this type of case would garner a bottom of the barrel attorney.)

        While that's up to the OP, many of the posts above would lead the OP to think he's in better position than he appears to be.
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        • Profile picture of the author Dennis Gaskill
          Originally Posted by Dan Riffle View Post

          Sure, get some legal advice, provided it's extremely inexpensive.
          Since the OP suggested he would in his original post, I assumed it would be at a price he was comfortable with.

          I'm glad we got all that settled. I was concerned I was going to have to send Claude to your house to give you a karate chop ... or possibly a pork chop.
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          • Profile picture of the author Dan Riffle
            Originally Posted by Dennis Gaskill View Post

            Since the OP suggested he would in his original post, I assumed it would be at a price he was comfortable with.

            I'm glad we got all that settled. I was concerned I was going to have to send Claude to your house to give you a karate chop ... or possibly a pork chop.
            He didn't say the advice would be free or inexpensive. Man, I'm being really pedantic today. Must be due to the game tonight.

            And no pork chops please. I've got a 15 lb city ham in the smoker. I've got plenty of pig.
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            • Profile picture of the author Dennis Gaskill
              Originally Posted by Dan Riffle View Post

              I've got plenty of pig.
              Way to easy for me, maybe Claude will comment on that.
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              • Profile picture of the author Dan Riffle
                Originally Posted by Dennis Gaskill View Post

                Way to easy for me, maybe Claude will comment on that.
                I left that dangling out there just for you, Dennis.




                Wait, that doesn't sound good either.
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                • Profile picture of the author Dennis Gaskill
                  Originally Posted by Dan Riffle View Post

                  I left that dangling out there just for you, Dennis.


                  Wait, that doesn't sound good either.
                  That does it, I'm outta this thread. I don't want Claude to think I'm trying to come between you two. :p
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                • Profile picture of the author HeySal
                  Originally Posted by Dan Riffle View Post

                  I left that dangling out there just for you, Dennis.




                  Wait, that doesn't sound good either.
                  Jeez Dan - you're always dangling something around, aren't ya? Someday you're gonna hurt yourself doing that.
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    • Profile picture of the author seasoned
      Originally Posted by Dan Riffle View Post

      Did anyone actually read the OP?

      His site is directly contextual to Mad Dogg Athletics' trademark.

      His site throws off "steady cash" - that doesn't sound like "gobs of money."

      I linked to Mad Dogg Athletics' trademark usage page. He doesn't comply.

      I also linked to an article stating Mad Dogg Athletics is going after gyms using the "spinning" term. Those gyms, which probably have more liquid resources than the OP's affiliate site, have decided to cease usage.

      Does this sound like a scenario worth a legal battle? Theoretically? Maybe. Pragmatically. No.

      Is it possible that Mad Dogg Athletics no longer has the ability to enforce its trademark? Maybe. Is it logical for the owner of an affiliate site which throws off "steady cash" to be the one who tests enforceability? Highly, highly doubtful.

      The evidence is out there that this isn't a scam.
      GIVE ME A BREAK! They are saying they created the CONCEPT in 1991? As for the term spinning, it is used ALL OVER! Even to refer to classes, etc... I have seen the concept for several decades, even if I haven't seen the term spinning. Even their own website says so!

      As cyclists, the two were looking to build a better stationary bike for cycling training and developed the first Johnny G Spinner using the ergonomics and geometry of a racing bike. Not satisfied with the components found on traditional stationary bikes,
      So all they have is a term that apparently is widely used by like everyone. And it IS a word that si commonly used.

      Steve
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      • Profile picture of the author Kay King
        For most online businesses the only question is whether your business produces enough revenue to pay the costs of defending against a claim of trademark infringement.

        If true that several other business owners did not fight this same claim it could be they consulted qualified attorneys who told them it wasn't worth it.

        In an older Forbes article one business owner described it as:

        After hearing about my trademark infringement problems, most people encouraged me to fight back. I considered taking their advice until an acquaintance who happened to be an intellectual property lawyer brought me back to reality.



        “They trademarked the name before you started your business,” he said, “so they have a strong case. Even if you wanted to fight it, you’d spend about five figures in legal fees with no guarantee of winning.”



        Resigned, I chose a new business name, moved my website to a new domain and prayed that the other business wouldn’t sue me for attorney fees.
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      • Profile picture of the author Dan Riffle
        Originally Posted by seasoned View Post

        GIVE ME A BREAK! They are saying they created the CONCEPT in 1991? As for the term spinning, it is used ALL OVER! Even to refer to classes, etc... I have seen the concept for several decades, even if I haven't seen the term spinning. Even their own website says so!



        So all they have is a term that apparently is widely used by like everyone. And it IS a word that si commonly used.

        Steve
        <shrugs> Ugh.
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  • Profile picture of the author bizgrower
    @ OP, there are legal forums you could check. Answers by lawyers.

    In this specific case, I think Riffle is spot on. (If I recall correctly, he almost became a
    lawyer.) In general all the answers very good. As you know, companies do try to "win" by scare tactics.


    @ HeySal,

    As I recall from the linear future, the case was Riffle v Whitaker.
    Dennis did do quite well, though. I cannot say more because that may
    alter outcomes.

    Dennis also did well mediating the WF Wolverines/Buckeye's dispute.

    Dan (errr, I mean Biz since Riffle is in this thread.)
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  • Profile picture of the author stevebent
    Whoa I never knew. I always wondered what happened to all those spinning classes. It's unfortunate this has happened to a site that has traction...
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    • Profile picture of the author Kay King
      What is unfortunate is the number of people starting a business online and not checking to see whether a term is trademarked or whether trademarks have been enforced in the past.

      There's a similar thread today where someone is asking "can I use a trademarked name" - and there are idiots telling him "sure, no problem".

      I wouldn't take down a site based on a phone call - but I'd advise taking a written communication about it seriously...assuming you do receive that written communication.
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  • Profile picture of the author sbucciarel
    Banned
    They have a very good case for getting that domain from you or suing you if they wanted to. You are promoting products in the same category as their website, which is good cause to cause confusion, which is why there is trademark law to begin with. If it were spinning kites or spinning wheels or spinning anything but bikes, you might have a case to keep it, but you'd still have to hire an attorney if they pursued it.
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    • Profile picture of the author HeySal
      Originally Posted by sbucciarel View Post

      They have a very good case for getting that domain from you or suing you if they wanted to. You are promoting products in the same category as their website, which is good cause to cause confusion, which is why there is trademark law to begin with. If it were spinning kites or spinning wheels or spinning anything but bikes, you might have a case to keep it, but you'd still have to hire an attorney if they pursued it.
      Oh - that's not good. Not good at all. That will look like a purposefully planned violation.
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  • Profile picture of the author Taniwha
    "If you look at the USPTO, the company appears to have a ton of different trademarks on "spinning," covering not just exercise classes, but also sports drinks, lotions and creams, nutritional supplements and computer software."

    I'd laugh if they start to go after article spinners.
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