How far can a trademarked name extend to cover other variants?

[spinningtrax]

What is the name of your state?
MASSACHUSETTS

I have a website called spinningtrax.com which I use to promote music mixes that can be used for indoor cycling. I haven't registered spinningtrax as a trademark because I am really not even a business, just a person using the site for a hobby.

I received a letter from an attorney on behalf of Mad Dogg Athletics claiming that my use of the name spinningtrax is an unauthorized use of their trademark of the word SPINNING which they claim to have exclusive rights to use for the promotion of any and all products and services that are related to indoor cycling. They claim that the use of my domain and site name are an infringement even though there is no reference to the word SPINNING anywhere on the site. The only references found anywhere on my site are to "Spinningtrax".

So my question is, can they tell me that I cannot use a fictitious word because their trademarked word appears as part of that made up name?

I'm not looking for any problems and have no intention of getting into some legal fight, but I am curious to know if this action on their seems reasonable and legally accurate.

Thanks for any helpful information!

 

[divgradcurl]

What is the name of your state?
MASSACHUSETTS

I have a website called spinningtrax.com which I use to promote music mixes that can be used for indoor cycling. I haven't registered spinningtrax as a trademark because I am really not even a business, just a person using the site for a hobby.

I received a letter from an attorney on behalf of Mad Dogg Athletics claiming that my use of the name spinningtrax is an unauthorized use of their trademark of the word SPINNING which they claim to have exclusive rights to use for the promotion of any and all products and services that are related to indoor cycling. They claim that the use of my domain and site name are an infringement even though there is no reference to the word SPINNING anywhere on the site. The only references found anywhere on my site are to "Spinningtrax".

So my question is, can they tell me that I cannot use a fictitious word because their trademarked word appears as part of that made up name?

I'm not looking for any problems and have no intention of getting into some legal fight, but I am curious to know if this action on their seems reasonable and legally accurate.

Thanks for any helpful information!

You could look up their trademark registration at www.uspto.gov. If they have a "standard character mark," which I suspect they do from what you've written, then they can apply their trademark pretty broadly within the range of goods and services their mark covers. It's certainly possible that, if they have a standard character mark, that they could potentially be able to cover all uses of the word "spinning," alone and when combined with other words, to describe indoor cycling stuff. That's what a standard character mark gets you, broad coverage in a narrow area (indoor cycling here), and it's also why standard character marks are usualy pretty hard to obtain.

By all means, if you want to keep your name and domain, take all of your info down to a local attorney, who can review all of the relevant facts and advise you accordingly.

 

[spinningtrax]

Not Registered as a "Standard" Mark

MASSACHUSETTS

According to uspto.gov Mad Dogg Athletics claim to the mark SPINNING is not a "Standard" mark.

This is from the TARR Database:

Serial Number: 75355976

Registration Number: 2202823

Mark (words only): SPINNING

Standard Character claim: No

So does this mean that their mark extends only to the word SPINNING?

 

[divgradcurl]

MASSACHUSETTS

According to uspto.gov Mad Dogg Athletics claim to the mark SPINNING is not a "Standard" mark.

This is from the TARR Database:

Serial Number: 75355976

Registration Number: 2202823

Mark (words only): SPINNING

Standard Character claim: No

So does this mean that their mark extends only to the word SPINNING?

No, it can also extend to "confusingly similar" marks and words. To determine infringement, you would need to go through the standard multi-part balancing test to determine whether the two marks are "confiusingly similar" or "likely to confuse" a customer. There is no balck-and-white answer.

But it is certainly possible, though by no means certain, that if they did decide to sue you for infringement, they could prevail. since there mark does appear in your made-up word, and you are in the same general line of business or services. On the other hand, a made-up word is usually provided more protection than a regular word, so maybe your usage would stand. I wish there were a better answer to give you, but without a thorough investigation of the caselaw based on all of the facts of your case, it's really hard to generalize any more accurately than this.

So, it's possible that their claim has merit, although it is by no means certain.

 

[spinningtrax]

Thank You So Much for Your Help

Hello,
Thanks so much for your advice. I'm just going to play it safe. I'm just a "hobbyist" using the web site for what is essentially non-commercial purposes and I'm in no position to embark on any legal battle, especially one that doesn't seem to have a clear and favorable outcome.

If I respond to their "cease and desist" letter with total conciliation to their demands are they likely to just drop it there? I just don't want to have them pursue me further legally.

 

[divgradcurl]

Hello,
Thanks so much for your advice. I'm just going to play it safe. I'm just a "hobbyist" using the web site for what is essentially non-commercial purposes and I'm in no position to embark on any legal battle, especially one that doesn't seem to have a clear and favorable outcome.

If I respond to their "cease and desist" letter with total conciliation to their demands are they likely to just drop it there? I just don't want to have them pursue me further legally.

Probably, but you want to protect yourself. What exactly does their letter ask you to do to comply? In other words, what "response" are they looking for?

 

[spinningtrax]

Here's the Bottom Line

This is the bottom line request of me from the letter I received from their attorney, in closing, reads:

We therefore demand that you immediately cease your use of (1)the "Spinningtrax" domain name, (2) the term "Spinningtrax" to sell music for use in connection with indoor cycling, and (3) the term "Spinvidz" to sell videos for use in connection with indoor cycling.

Please confirm Spinningtrax' compliance on or before the close of business on January 31, 2006, so that we may attempt to reach an amicable resolution of this matter.

Nothing in this letter shall be construed as a waiver or relinquishment of any right, remedy, or defense possessed by Mad Dogg or any other affected party, all of which are expressly reserved.

I don't have any problem meeting these requests, in fact, they are mostly fulfilled already, but I'd like to think that confirmation of that action on my part will result in an what they deem an "amicable resolution."

 

[divgradcurl]

I don't have any problem meeting these requests, in fact, they are mostly fulfilled already, but I'd like to think that confirmation of that action on my part will result in an what they deem an "amicable resolution."

I understand your worries here completely, and hope that if you do fulfill their requests, that IS the "amicable solution."

However, they may come sniffing around for more once you've complied with their first request, and you really can't force them to waive their right to sue you -- in fact, they've pretty much said that they are not waiving the right to sue you at this point, so they will probably come back and offer you a covenant not to sue in exchange for some monetary compensation.

As always, for maximum protection, you should take this letter down to a local attorney, who can review all of the facts of your situation and advise you accordingly. At this point, the best you can probably hope for is to comply and see what happens.

Were you selling anything on the website?

 

[davezan]

Trademark holders regularly go after registrants not just because the domain
name/s bear a word matching their trademarked word or phrase, but because
it's how the domain name is used. If the name had any hint of commercial use
whatsoever, especially if it's related in any way to what the trademark holder
is doing, expect them to demand you transfer the domain name to them.

And some are so devious that once they ask you to do this and that and you
"blindly" comply, they'll still take action against you and claim your doing them
is equal to "bad faith".

If the name's that important to you, be prepared to defend your rights to it.

 

[breakaway]

man, I just went to your site and it re-directs to their page now....so I guess they won.

anyway, if I was in your situation, I think what I'd do is purposely spite them and change the site content into something else like speedskating. Does anyone know if they could still sue after you change the content of your site?

 

[The Occultist]

man, I just went to your site and it re-directs to their page now....so I guess they won.

anyway, if I was in your situation, I think what I'd do is purposely spite them and change the site content into something else like speedskating. Does anyone know if they could still sue after you change the content of your site?

So...you realize this thread is over a year and a half old?

Besides stupid, reviving old threads is deemed inappropriate. Please don't continue this practice.