Results 1 to 16 of 16
  1. #1
    ABW Ambassador
    Join Date
    January 18th, 2005
    Posts
    641
    What do you think ?

    I recently got ANOTHER C&D letter (my second to date - and I only have two sites ) .The last one came about a year ago for a site that had the word "freebies" in the domain - The trademark owner thought he owned the word "freebies"

    That whole incident appears to be history, as I basically told them where to go , and haven't heard from them since . At the time, I was way past the point of hanging it up with freebies in general anyway, and moving on to sales ...
    and I so I did .

    NOW THIS - I got a new one for a site I actually care about , and I'm not anywhere near ready to "hang it up" just yet.

    The names below are fictional , but the same EXACT differences exist in my case as it stands now .

    Let's say Trademark owner is:
    "Pro Golfers Collection" , and they sell golf equipment direct to the public , and my domain is :
    " Pro Golfing Catalog " , selling golf equipment thru affiliate sales .


    Am I infringing on their trademark , or merely using generic , descriptive words to describe the products I am promoting ?


    What do you think ?

    I'm thinking ..This is pure BS, and I can't believe the rotten, stinken luck I have been having . It appears that the TM owners attorney was also behind having my site removed from INK a few weeks ago .



    I know ...I could just cave in and run away with my tail between my arse , change the domain, and every other darn thing that would have to be changed , and move on , but there is a matter of principle here .

    If I don't fight , basically, I'm agreeing that these people have exclusive use of the words
    Pro Golfers, Pro Golfing, Professional Golfers , and whatever other variations they may in the future decide to stake their claims on.



    Grrrrrrrr... A lawyer friend of my husbands has the C&D that I faxed over, but I'm waiting for him to consult with a few TM attorneys on this , to see if there is hope for me or not .


    In the meantime, please ... Someone, anyone ... tell me what you think of this mess .


    To make matters worse for me,
    or possibly better , I'm really not sure ...this
    TM owner is an advertiser that I am affiliated with - not sure if the attorneys for the TM owner realize this fact yet .

  2. #2
    Full Member
    Join Date
    January 18th, 2005
    Posts
    388
    Why not make sure they know that you promote them?
    IANAL, but i think anybody can start legal proceedings against you, and waste a lot of time and money.
    Try contacting somebody in charge of that company and explain to them what kind of bad pr (not in a google sense) they will get if the word gets out they sue (or threaten to sue) their own affiliates.

    There are a lot of companies out there with the head not knowing what the hands are doing.

    Konstantin,
    www.GenericGifts.com

  3. #3
    Super Sh!t Stirrer SSanf's Avatar
    Join Date
    January 18th, 2005
    Posts
    9,944
    I'm thinking ..This is pure BS, too.

    Mr.Merchant, if you do business in any way what-so-ever with parasites, your products will not be sold on my sites!!

    LISTEN! CJ don't give no whistles no more! I can hear the music of another piper!

  4. #4
    Newbie
    Join Date
    January 18th, 2005
    Posts
    3,219
    Lisa,

    Tread lightly... You are an affiliate for them "meaning you represent there interest" if you are in direct competition of trade words.

    Now if you owned a bricks & mortar I can see where you have a good fight. Do you have a B&M? If so grab yourself a few say GOLF items.

    But its sounds pretty sticky for you!

    But that’s just my opinion, I would keep my mouth shut and tell the legals everything.... the entire truth! They need all the information to help you.

  5. #5
    ABW Founder Haiko de Poel, Jr.'s Avatar
    Join Date
    January 18th, 2005
    Location
    New York
    Posts
    21,609
    Depends on what "Pro Golf" actually is and how it was registered.

    <font size="2" face="Verdana">Haiko


    The secret of success is constancy of purpose. ~ Disraeli
    </font></p>

  6. #6
    ABW Ambassador buy_online's Avatar
    Join Date
    January 18th, 2005
    Location
    Richmond, VA
    Posts
    3,234
    "Why not make sure they know that you promote them?"

    I would give the AM a call, and tell them that you are interested in building business. And, "Oh by the way can we clear up this mess?" You might at least get the inside scoop on what they are doing if he/she doesn't have control over the situation. And if he does have control, maybe the relationship you started will help you.

    Just a thought...

    Fred

    <font face=verdana size=1 color=43639C>You might just be a Parasite if..."You can't schedule a family reunion until after the parole board meets"</font>

  7. #7
    Newbie
    Join Date
    January 18th, 2005
    Posts
    3,219
    As I’m searching trademark battles, I notice the real war seems to be – squatters wanting to get the buck for buying out a name first, and affiliates or similar types.

    Companies are primarily complaining about people stealing that do not own their own store.

    You do not see Pro Golf fighting with Golf Presence or so on.

    I do get letters from merchants I participate with as an affiliate, stating I cannot have this name or that name for trademark infringements as an affiliate.

    I can in fact stock my warehouse with all kinds of golf goodies and call my online shop Golf Goodies and not a sole can say didly, unless of course its taken already!

    The creeps that started the overbidding for trade names started this mess and as usual everyone else has to pay for their greed!

  8. #8
    ABW Ambassador
    Join Date
    January 18th, 2005
    Posts
    641
    Sandra, I appreciate your comments , and yes, that is a problem I noticed as well while searching case law .

    If I "were" a squatter, with intentions of selling them their name , I would have bought their name , but I didn't ... I never even heard of them until a few months ago .

    I chose my own domain out of a generic group of words to describe the products I would be promoting, and that domain just happened to be purchased 8 months before they even decided to purchase their trademark as a domain and bring their business online .

    I did then, and still believe that I am making fair use of the words , and it appears that the courts have ruled that fair use does, in fact, occur when a descriptive mark is used in good faith for its primary, rather than secondary, meaning .


    Their TM is , and this is a fact, eithor highly suggestive, or descriptive, it's really hard to tell, that's for the judges to decide .
    Eithor way, these types are given the least amount of protection , aside from single generic words , because (quoting a judges opinion after plaintiff LOST the case)
    " to allow such capture "`would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.


    Also, I see where the courts have ruled that the law will even allow for a small amount of
    "confusion" to exist in those cases where a fair use defense is successful.

    Sandra, Neithor you or I are required to own a brick and mortar store, as you mentioned in your example , in order to legitimately describe the nature of our websites .

    Don't let the big TM and brick and mortar stores fool you , bigger names that this merchant after my arse have lost on similar cases .

    I'm finding them for the attorney right now, incase he didn't bother to send his paralegal on a hunt for applicable case law

  9. #9
    Full Member
    Join Date
    January 18th, 2005
    Posts
    305
    Hello,

    I didnt see that you stated you are an affiliate of theirs??

    Are you?

    Either way, the following:

    "Pro Golfers Collection" VS
    "Pro Golfing Catalog "

    Dont really appear to be the same at all. So what if you are in the same industry! Are you two the only two companies selling golf stuff on the net?

    I have NO clue how they can claim that you are using their trademarks?? Have you looked up their trademarks?

    I dont know why these companies go around trying to scare people!

    Well, in any event, too bad you couldnt give us better details, but Id let them take me to court.

    How could you lose?

    PS personally, Id go right to their competitor and have them help you with the fight!!! Ive done it before with EXCELLENT results!

  10. #10
    Retired Member
    Guest
    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR>Originally posted by Lisa:
    ... that domain just happened to be purchased 8 months before they even decided to purchase their trademark as a domain and bring their business online .

    <HR></BLOCKQUOTE>

    Are you saying you started using the name before they did? If so their case is completely bogus. You have the prior use.

    Retired Member

  11. #11
    ABW Ambassador
    Join Date
    January 18th, 2005
    Posts
    641
    Hello BigTop ,
    Thank's for the word of confidence .
    Yes, I am an affiliate of theirs. I only recently added them to my site with a few product links , and made a few sales for them .

    I stopped adding new links when I realized they don't convert very well , but their links still remain on the site.

    I should be getting proof of payment and my affiliation with them in the form of a check stub with their name on it any time now .



    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR> PS personally, Id go right to their competitor and have them help you with the fight!!! Ive done it before with EXCELLENT results! <HR></BLOCKQUOTE>


    Really ? Now that's an idea .

    How exactly would you suggest I go about approaching another competitor with an issue like this ?
    Just picking up the phone and talking to their legal department ?

    Come to think of it , I do have one or two competing advertisers that I consistantly produce sales for in the thousands on a monthly basis , maybe they would, at the very least , talk to me.

    And, since this phrase is common and directly relates to their own products, I don't think they would want ANYONE gaining a monopoly over this entire category .

    One of my affiliated stores in particular , is such a huge and powerful monster corporation , that in comparison , this merchant coming after my arse is a tiny fruit fly .

  12. #12
    ABW Ambassador
    Join Date
    January 18th, 2005
    Posts
    641
    Steve ,
    Thanks, but :

    No, I don't have prior use in this case .
    The TM was registered in 1991 ,only the domain name for their online store( TM name) was registered last year, eight months after I registered my domain .

    The question is , I think, whether I have a right to use the slighly different words in a descriptive, common way in order to describe my website .

  13. #13
    Full Member
    Join Date
    January 18th, 2005
    Posts
    305
    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR>Originally posted by Lisa:
    Hello BigTop ,

    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR> PS personally, Id go right to their competitor and have them help you with the fight!!! Ive done it before with EXCELLENT results! <HR></BLOCKQUOTE>


    Really ? Now that's an idea .

    How exactly would you suggest I go about approaching another competitor with an issue like this ?
    Just picking up the phone and talking to their legal department ?

    +++NO! talk to the AM! Let the AM do all the talking for you!

    Come to think of it , I do have one or two competing advertisers that I consistantly produce sales for in the thousands on a monthly basis , maybe they would, at the very least , talk to me.

    +++ Then thats all you need to know! Problem solved!

    And, since this phrase is common and directly relates to their own products, I don't think they would want ANYONE gaining a monopoly over this entire category .

    ++ See, I dont get what this other merchant is trying to pull! IAgain, since I dont know exact specifics, I cant really say for sure, but as you have described it, they sound as if they are only out to intimidate you!

    One of my affiliated stores in particular , is such a huge and powerful monster corporation , that in comparison , this merchant coming after my arse is a tiny fruit fly .

    ++Sounds like another useless merchant to me! Kick em to the curb girlfriend! And other merchants like them that use intimidation and threats! WTF kind of partner is that! I wouldnt tolerate this in the "real" world and Ill be damned if Id let some little shrimp on line stick in to me either!<HR></BLOCKQUOTE>

  14. #14
    I like traffic lights
    Join Date
    January 18th, 2005
    Location
    Southern hemisphere - away from Fukushima
    Posts
    2,936
    Hard to say without knowing EXACTLY what the domain names and TM are.

    Mant tm's have a clause in them stating that the TM owner's right cannot be extended past the exact TM. (or something like that)

    Check their TM at http://www.uspto.gov

    Definitely difficult to help when having to guess what the TM and domain really is.

    Jimmy James Inc. fan club membership # 3312

  15. #15
    2005 Linkshare Golden Link Award Winner  ecomcity's Avatar
    Join Date
    January 18th, 2005
    Location
    St Clair Shores MI.
    Posts
    17,328
    Go get em Girl. It's not like your dealing with the wanks down at Disney. HELL. AOL was just forced by their board to remove AOL from their corporate name, stock ticker and signage. WorldCom dropped their name and picked back up MCI to confuse the consumers and stock buyers. K-Mart wants to go to K-Flush ...end run the anal retentive buggers

    Mike & Charlie ...

    If they won't adopt and feed a bird ..flip them one! BBQ some Gator and remember to flush WhenU..

  16. #16
    Full Member
    Join Date
    January 18th, 2005
    Posts
    261
    the "TM" (trademark) symbol only alerts the public to one's "claim" - meaning they say they have a claim to the words but they would have to prove that claim in court.

    If they use the federal registration symbol "®" , then their claim has been filed and APPROVED and can be checked at http://www.uspto.gov/main/trademarks.htm
    Also pending registrations can be searched.

    Not all applications for registering a trademark are approved.


    My guess would be that if a company really wants to protect their words , and they really have a legitimate claim , they would have them registered. Otherwise IMO , they are just trying to bully , hoping their "claim" is not challenged.

    Toledo Swords - Collectible Heirloom Armory
    http://www.toledoswords.com

  17. Newsletter Signup

+ Reply to Thread

Similar Threads

  1. Trademark issue: using common descriptive terms?
    By c4 in forum Business & Legal Issues
    Replies: 22
    Last Post: July 11th, 2005, 05:38 AM
  2. Trademark issue: using common descriptive terms?
    By c4 in forum Midnight Cafe'
    Replies: 22
    Last Post: July 11th, 2005, 05:38 AM
  3. direct tv industry taking a hit on trademark terms
    By Lasthope in forum Midnight Cafe'
    Replies: 5
    Last Post: September 23rd, 2004, 02:24 PM

Posting Permissions

  • You may not post new threads
  • You may not post replies
  • You may not post attachments
  • You may not edit your posts
  •