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Federal Trademark Questions

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bekmt

Junior Member
My State: AK

I received notice today that one of my domain names infringed on someone elses trademarked name.
This particular site does not get me much business and I honestly care nothing for it. However before going to any expense to take it down or do anything I looked into the matter:

The attorney emailed me then emailed a Cease and decist. Is it even normal to email a cease and decist? Seems unprofessional...

In his emails and C&D he claims his client owns a trademark and identifies it, and says mine infringes on it b/c mine has the words included in the domain, but mine also lists my city. He then provides a list from legal zoom that indicates a search relating to this mark was done to check for conflicting marks prior to registration. However the list and "exhibits" he provides do not identify his mark at all. For all I know it could be a search for things related to something else. Nothing provided states the search was related to the mark in question. Additionally the search is dated October, but this is May! By this time he should have a confirmation of filing or something better to send, not?

The lawyer refuses to send me the Trademark serial number. His response in 1 email was "we are in the process of filing".
If that was the case wouldn't he have a serial #?
Is there any reason he wouldn't provide it?

When I filed for my 2 businesses I got a serial # right away, and I used legal zoom too.
My marks also come up in searches on the TESS Site and have since filing, and they arent even all the way thru the process yet.
When I search his mark or any variation, nothing comes up, it says there is no mark.
In addition when I search for marks owned by his client, there are a few but not the one referenced.

I'm concerned I'm being bullied into turning over domain names, as they as I do so in 10 days.

I'm wanting to sit back until he provides the serial number or I see the mark on the us trademark site, but I also dont wanna be out legal fees for something like that. Don't wanna be bullied into giving up a domain I've had for over a year either, b/c he can buy it if he wants it I think.

Am I right to request serial number or some proof of his mark?
If he does file for one now can he stop me from using the domain name if I've had it in use this long?


(the other party lives out of state, does not operate in this state according to his site, i only use it locally)
 
Last edited:


FlyingRon

Senior Member
It's only unethical if he misspelled it decist. No reason why it would be unprofessional. The cease and desist letter is sent by the way that is quickest and will have the most impact.
Legal letterhead usually gets people's attention, but there's no specific requirement or recommendation for that.

Registration is not required nor necessarily sufficient for trademark rights. He's not obliged to provide you any information on that prior to his filing a case against you.
TESS searching is NOT sufficient to find your mark is not being already used as a trademark.

Nothing you say has any merit as to whether you are infringing or not. The question is what are the two marks, their market space, etc...

As for the domain, that ISN'T A FEDERAL TRADEMARK QUESTION really. The issue is whether you have a domain that you are squatting on in bad faith. If you do not have legitimate trademark rights nor a company name in the product, then if he files (it will cost him several thousand) with one of the the UDRP arbitrators, you stand a good chance of losing. This won't even be in any court (federal or otherwise). Domain disputes are not ruled by any sane rule of law.
 

bekmt

Junior Member
Thank you for replying to me and I'm sorry I misspelled "desist".

I spoke with a lawyer and the issue is he runs a directory with the name in question, but not a location. He buys domains according to the city of his clients and puts his "done for you" marketing on them. However on the bottom of his main site and each site for individual cities, it says "all locations are independently owned and operated". The only use of the name is an online directory, there is not a single business that has that name. It basically runs under the apparent guise of a franchise when it's not, which I guess would give consumers confidence.

My lawyer said the fact that it says "each location individually owned and operated" would give me case to use it.

Additionally the domain in question is not a "name" but a descriptive phrase. An example would be "Tasty hamburgers.com" that sells domains for individually owned burger joints in a city, so say a locally owned mom and pop called "johns diner" could buy "tastyhamburgers(insertcity).com" and be on his directory. He would build them a website template with done for you opt in boxes to get leads. However he provides no product, no regulation, no nothing. The mom and pop can do as they please business wise. All they are paying for is to be on his directory and his marketing.

So the fact that I bought "tastyhamburgers(insertcity).com", according to the lawyer simply means I am using it as a descriptive phrase and that is not trademarked, since no business named "Tasty hamburgers" actually exists, only an online directory. He said I can use that if my "hamburgers are tasty, etc" (the hamburgers reference is an example only)

He recommended I put "we are not affiliated with the directory "tasty hamburgers.com" on my site, but he basically said the guy has no case.
Additionally, he did a search and said there is no trademark federally filed and until there is one he can't stop me and then he would have to establish that he has rights to use it in my state before me.

The lawyer said I can sell him the domain and I asked if that would be squatting and he said no because I actually use it and it's not in bad faith. He said I don't have to just give it to him. He said the guy can not sue me until he gets a trademark and it is normally standard procedure to send a copy of the filing and # with the C & D.

I feel a lot better but if anyone else has anything else to say feel free to add. I realized there are a lot of these directories for all sorts of things from plumbers to handymen to all things, but they are just that, directories using a descriptive phrase that is good for key words.
 

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