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  1. #1
    SitePoint Member MrSandMan's Avatar
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    Common Law Trademark phrase (not domain)

    Hi Sitepoint members,

    Because I received a Cease & Desist letter in the mail from the Law Firm of a certain mid-size company, I will be changing the actual issue to something similar. To avoid incriminating myself, I have changed the words. I do not need their Law Firm finding this thread to use it against me in court.

    I have a webzine website that is under 2yrs old, my site is starting to do well in terms of traffic. The advertising and adsense income that it brings is only enough to pay for the server and domain fee.

    The website that is claiming that I am infringing on their "common law trademark" is a fairly well sized webzine and magazine company, not big, but certainly not small.

    Here's my question, I am using a function on my site that is a generic name, I cannot find anything online where Common Law enforces generic names/phrase.

    Here's an example:
    (this is not the actual issue, this is only similar)

    445autocars544/c0m (example) has "car search" phrase on their site

    A11autoSales/c0m's law firm sends 445autocars544/c0m a cease & desist letter claiming "Common Law Trademark Infringent"

    My argument is:

    1) "car search" is a generic phrase. Just like the word "Computer" or "Used Cars For Sale" can't be trademarked (I think)

    2) I have an older domain which i have used "car search" in the past, but recently upgraded to a more appropriate name for the niche. Though, the only way I can prove this, is the I still own the old domain name, but it's not in use anymore. So I cannot prove the site once contained "car search"

    ...wait, there's more!

    A1cars4sales/c0m, who is 4 times older than the said company claiming "Common Law Trademark Infringement", would actually be the godfather of the "car search" mark, as they actually used and still currently use the "car search" mark.

    Remind you, this is not a domain issue, this is simply a generic phrase being used to describe a function on the web site. Of course, we could change the name of the function to "find a car" or whatever, but that isn't too cumbersome... and if "car search" can be common law trademarked, how do I know that "find a car" isn't infringing another Common Law trademark?

    I know this is confusing, I know it really doesn't make any sense to me how someone can claim Common Law on something like this. I understand "Apple" is a trademark, but they actually went through a court process and had to fight for it.

    If stuff like this gets enforced, then this could change the future of the interweb, because any competitor can claim "infringement" on any word/phrase they chose just to "get the edge".

    What gives?

  2. #2
    Follow Me On Twitter: @djg gold trophysilver trophybronze trophy Dan Grossman's Avatar
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    For them to prove they have a common law trademark will be difficult, to do so with a generic term like you're suggesting even moreso.

    I would find a local attorney, and ask their advice. If they think they have as little a case as I do, and aren't some big mega corporation with unlimited legal funds, ignore the C&D, they're probably just using it to bully around competition.

  3. #3
    SitePoint Addict CWebguy's Avatar
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    sometimes you have to.....stick it to the man

    If you know you didn't honestly try to copy/copyright a.k.a. steal from them then I guess you are alright. Definitly check out a free lawyer though like the above suggested.

    Take care.

  4. #4
    Follow Me On Twitter: @djg gold trophysilver trophybronze trophy Dan Grossman's Avatar
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    Quote Originally Posted by CWebguy View Post
    If you know you didn't honestly try to copy/copyright a.k.a. steal from them then I guess you are alright
    Copyright and trademark are totally different sets of laws, and any copyright infringement or lack thereof would have no bearing on whether his domain infringes upon a trademark.

  5. #5
    SitePoint Member MrSandMan's Avatar
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    Quote Originally Posted by Dan Grossman View Post
    For them to prove they have a common law trademark will be difficult, to do so with a generic term like you're suggesting even moreso.

    I would find a local attorney, and ask their advice. If they think they have as little a case as I do, and aren't some big mega corporation with unlimited legal funds, ignore the C&D, they're probably just using it to bully around competition.
    I agree that I should talk with an attorney, but a C&D letter should never be ignored or dismissed. That could actually bite ya in the butt...

    Not responding might show guilt

  6. #6
    Follow Me On Twitter: @djg gold trophysilver trophybronze trophy Dan Grossman's Avatar
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    Quote Originally Posted by MrSandMan View Post
    Not responding might show guilt
    Anything you say can be used against you if the threat isn't idle. Not saying anything can't hurt you later. Guilt is proven by showing you violated a law, not whether you act guilty.

  7. #7
    SitePoint Member MrSandMan's Avatar
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    Quote Originally Posted by Dan Grossman View Post
    Anything you say can be used against you if the threat isn't idle. Not saying anything can't hurt you later. Guilt is proven by showing you violated a law, not whether you act guilty.
    Okay, I get your point. I did respond twice so far. I basically told them my position like I did in this thread.

  8. #8
    SitePoint Member MrSandMan's Avatar
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    Okay, check this out. I just found this through cyber.law.harvard.e d u

    cyber.law.harvard.e d u/metaschool/fisher/domain/
    Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody. Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary, meaning, and no consumer confusion is likely to result. So, for example, a cereal manufacturer may be able to describe its cereal as consisting of "all bran," without infringing upon Kelloggs' rights in the mark "All Bran." Such a use is purely descriptive, and does not invoke the secondary meaning of the mark. Similarly, in one case, a court held that the defendant's use of "fish fry" to describe a batter coating for fish was fair use and did not infringe upon the plaintiff's mark "Fish-Fri." Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). Such uses are privileged because they use the terms only in their purely descriptive sense.
    Another question I have. If I do take this all the way (I would represent myself) and for some reason lose, is Common Law cases eligible for recovering damages and/costs?

    I think I read that Common Law cases don't get the extra perks as a registered trademark. ?

  9. #9
    SitePoint Zealot bronze trophy
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    Sandman,

    You are quite right. Common law trademarks don't have the same protections that federally registered trademarks do. I actually have a blog post on the topic if you're interested. You can see it here.

    If you have additional questions, I'm always happy to help.

    Deena
    ______________________________________________________________________
    Any opinions are offered without knowledge of the specific law of your jurisdiction and with only the limited information provided in your post. No advice given here should be reasonably relied upon by you or any third party without consulting an attorney who is aware of all of the facts and law surrounding your situation. Any advice given here is not intended to create an attorney-client relationship in any way.
    Deena B. Burgess, Esq.
    www.ebusinesslawgroup.com
    Offering Affordable Legal Services to Online Businesses
    Find me on Twitter and Linked In

  10. #10
    SitePoint Member MrSandMan's Avatar
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    Update:

    First and foremost, thanks for all your help. I sent a letter to their attorney basically telling them that:

    1). They cannot trademark such a generic term.

    2.) They cannot prove they have common law on this term because there are multiple websites 10+ years old (nearly 4 times as old as their website) in the same niche using the same generic term.

    I replied to this attorney at the end of March, and to date, they have not replied or pursued. I guess they either realize they are outta gas or don't feel comfortable with a lawsuit because they wouldn't be able to collect legal fees or damages.

    This entire situation is a clear example of a big company trying to flex their muscles with competitive, yet smaller, websites in the same niche. Pretty pathetic they are so scandalous. Their threats was stressful and time consuming in my life. I almost want to expose this company and try to get my visitors to boycott this website... but that could entice a new legal fight that I don't want or need... or have the resources to back up.

    I guess my lesson here is to challenge any "common law" disputes, and not give up. Because at the end of the day, it costs you nothing (they can't come after you for damages or legal fees) and let them accumulate the legal fees if they so desire. If they are too cheap to properly trademark their mark, then they don't deserve to claim it as their own. And the bottom line, no court would let them trademark such a generic term. Imagine if someone tried trademarking "Used Auto Sales" mark, that's just not logical... and a waste of funds trying.

    Cheers

  11. #11
    SitePoint Evangelist
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    Quote Originally Posted by MrSandMan View Post
    They cannot trademark such a generic term.
    Without knowing the actual phrase, there's really no way of knowing if they're
    not capable of using it as a trademark. But...I'll take your word for it.

    What you're referring to aren't generic words, but dictionary words. Words like
    Shell or phrases like Head And Shoulders are dictionary words for the mollusk
    and one who's above others, yet you see people loading up Shell gas or wash
    their hair with Head And Shoulders shampoo.

    Just because we see common words or phrases used commonly everyday for
    their common meanings doesn't mean they're generic for every other definition
    or description no matter what. Look up fanciful, arbitrary, suggestive and also
    descriptive trademarks in your spare time.

    The point here is generic or dictionary words cannot be trademarks if they are
    used descriptively for their generic or dictionary definitions. But they can be if
    used distinctively to identify their source of goods or service in commerce,
    like the examples I stated above.

    I don't know if U.S. trademark law extends to common law marks, but I kinda
    recall one attorney mentioned a case under the Anticybersquatting Consumer
    Protection Act (ACPA) of a party who got a domain despite showing he only
    had a common law mark. I'll try to find that case.

    Anyway, good to hear that other party hasn't bothered you since. But for all
    you know, they might be applying for a Federal registration for that phrase or
    so and possibly try again later.

    Be ready for the worst. And good luck.

  12. #12
    SitePoint Member MrSandMan's Avatar
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    Quote Originally Posted by Dave Zan View Post
    Anyway, good to hear that other party hasn't bothered you since. But for all
    you know, they might be applying for a Federal registration for that phrase or
    so and possibly try again later.

    Be ready for the worst. And good luck.
    Wouldn't they need to prove they are the first to use such phrase online, in the same niche?

    I can prove there are multiple 10+ year old websites using this same phrase (in the same niche). It's nothing unique. By the way, the company in question is only 2.5 years old.

    I think they'll have as much luck being granted from the Federal registration as applying for "Used Auto Sales" or "Fish Fry".


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