Need some help/advice regarding trademarks

[BooGiMaN]

my sister does some webpage development on the side for extra cash and has a webpage lets call her webpage wxyzdesigns.com (i will use the letters wxyz in place of her real name where 'wxyz' are the first two letters of her first name and the first two letters of her last name)

this morning she got a letter from a company stating she has violated their trademarked name the company is wxyz.co.uk which does graphic designs and webpages and they also seem to have wxyz.com that sells handbags

it does seem they have trademarked the name 'wxzy'

they threatened legal action if she does not stop using her webpage.

do they have a case against her?

any help is appreciated

 

[FoBoT]

they are in the UK?

where are they going to sue her?

unless it is a really BIG company, i doubt they'll pay for a lawyer in California to mess with you

was the letter from a lawyer or the company itself?

i'd wait and see what they do next.

 

[dullard]

It seems like your sister has no case. She is violating the trademark and they are telling her to stop.

She has three choices.
1) Hope they don't care and ignore the problem. If this is the case, why did they bother to send the letter?

2) Fight in court with no case supporting her side. She'll probably lose, and have massive lawyer fees.

3) Change the domain. It'll cost a few bucks and she'll be done in a few minutes.

I can't just make a website called BurgerKingSandwiches.com and sell burgers from it. That is what trademarks are for.

 

[kumanchu]

advice #1: don't try to sell the domain to them, in court that means she has the site in "bad faith" ie GUILTY
advice #2: you don't have to stop using the site
advice #3: make it clear on her site that she is not affiliated with the uk company
advice #4: ignore the letter until you get a summons

i am not an attorney
i am a law student specializing in ip
i am not responsible for what you do with this advice



edit:

12 wikipedia has a decent overview of the topic.

 

[aircooled]

I would NOT respond to the letter in any way shape or form. If she continues to receive them, then she should seek legal advice.

 

[JS80]

she is SOL

 

[CptObvious]

Hmm, wxyz.co.uk doesn't have any real content, and wxyz.com is a TV station in Detroit, it looks like. But going by what you said, if they're in the same business (design) and the other company has the name trademarked already, it's a pretty straightforward case in their favor.

 

[FoBoT]

i guess you are CptObvious for a reason

 

[JS80]

Originally posted by: FoBoT
i guess you are CptObvious for a reason

rofl

 

[CptObvious]

Originally posted by: FoBoT
i guess you are CptObvious for a reason

I've been skimming paperwork all day. Should be reading more carefully.

 

[Injury]

I think what it comes down to is whether two letters of her first name and two letters of her last name is enough to indicate that its her name and she has legal reason to use it.

I'm not completely versed in trademark, but I do believe the following to be true:
- If you are not parodying someone or INTENTIONALLY trying to take their business, then a company may request or threaten but really has no legal bearing to prevent you from using your own name as a company.
- Trademarks must be registered in the country you want it to exist in... I don't think there is a "global" trademark. If they aren't a registered US trademark and only UK, ignore it.
Of course, once again, I'm not a lawyer, don't know if this is true, and would not expect you to go on this without your own research. Feel free to correct me if I'm wrong.


In any case, from another web designer's standpoint, unless you are a full-time business, then just go by your name instead of some tacky company name.

 

[kumanchu]

Originally posted by: Injury
I think what it comes down to is whether two letters of her first name and two letters of her last name is enough to indicate that its her name and she has legal reason to use it.

I'm not completely versed in trademark, but I do believe the following to be true:
- If you are not parodying someone or INTENTIONALLY trying to take their business, then a company may request or threaten but really has no legal bearing to prevent you from using your own name as a company.
- Trademarks must be registered in the country you want it to exist in... I don't think there is a "global" trademark. If they aren't a registered US trademark and only UK, ignore it.
Of course, once again, I'm not a lawyer, don't know if this is true, and would not expect you to go on this without your own research. Feel free to correct me if I'm wrong.


In any case, from another web designer's standpoint, unless you are a full-time business, then just go by your name instead of some tacky company name.

trademarks are "global" if you consider the reciprocal policy for all nations that are a part of WIPO. in addition, registration is not necessary to enforce a trademark. trademarks can be enforced so long as it is being used.

 

[kumanchu]

Originally posted by: dullard
It seems like your sister has no case. She is violating the trademark and they are telling her to stop.

She has three choices.
1) Hope they don't care and ignore the problem. If this is the case, why did they bother to send the letter?

2) Fight in court with no case supporting her side. She'll probably lose, and have massive lawyer fees.

3) Change the domain. It'll cost a few bucks and she'll be done in a few minutes.

I can't just make a website called BurgerKingSandwiches.com and sell burgers from it. That is what trademarks are for.

she is not violating their trademark.
she has a case.
she doesn't have to change her domain.

 

[iamaelephant]

This smacks of the Uzi Nissan case. Corporate assholes.

 

[Paperdoc]

The fact that you have a name does NOT give you the right to use it in trade. Otherwise guess how many McDonalds would be running restaurants! The legalisms come down to things like:

Where is the trademark registered? In the same area where your sister also is trading? This is tricky in the case of internet-based businesses where geography is not the way to define the customer base. The other company can only sue to defend their rights in a jurisdiction where they are registered. Note that the fact they appear to be UK-based tells you NOTHING about where they have registered trademarks. Companies often register in many countries planning to do some business there.

Are the names similar enough to cause confusion on the part of potential customers? Enough to cause him / her to buy from the wrong vendor? This is a legal judgement question, not wise to ask amateurs for the answer.

Are the two companies trading it similar goods and services? In this case, it appears yes.

And many more.

This all reinforces the need to research the potential name of a new company (and products) before using it. That might be your sister's best bet. Choose a new name, get it searched properly, then switch. Often in cities there are business development agencies who can point you to how to get this done as inexpensively as possible (not usually free). This should not require an expensive lawyer; defending a lawsuit will!!

 

[dullard]

Originally posted by: kumanchu
she is not violating their trademark.
she has a case.
she doesn't have to change her domain.

Time for you to go back to your law school classes and read up.

No, at this point she doesn't have to change it. But it is a few dollars and a few minutes now vs. possibly thousands of dollars and months of work later. Even if they never pursue it any further, the payoff in no stress is worth the simple domain change. A little bit of common sense now wins out over lawyers and legal battles. Even if she won with no defense it'll be worth it to switch now.

 

[Baked]

How did that company get a hold of her mailing addy in the first place? People actually put real info in their domain's WHOIS fields? Ever heard of WhoisGuard?

And LOL @ Nissan being the only Japanese automobile w/o a website under their own name. pwn.

 

[Mday]

if it's a UK company, she does not have to comply unless she's in the UK. She as a right to use her name though. So, it really depends on what judge would be reviewing the case.

She is not libel nor does she have to do anything, given the information you have given so far.

 

[kumanchu]

Originally posted by: dullard

Originally posted by: kumanchu
she is not violating their trademark.
she has a case.
she doesn't have to change her domain.

Time for you to go back to your law school classes and read up.

No, at this point she doesn't have to change it. But it is a few dollars and a few minutes now vs. possibly thousands of dollars and months of work later. Even if they never pursue it any further, the payoff in no stress is worth the simple domain change. A little bit of common sense now wins out over lawyers and legal battles. Even if she won with no defense it'll be worth it to switch now.

maybe you should read the most recent wipo and udrp decisions....

not to mention, you can change it at anytime, no reason to do it now.

 

[kumanchu]

Originally posted by: Paperdoc
The fact that you have a name does NOT give you the right to use it in trade. Otherwise guess how many McDonalds would be running restaurants! The legalisms come down to things like:

Where is the trademark registered? In the same area where your sister also is trading? This is tricky in the case of internet-based businesses where geography is not the way to define the customer base. The other company can only sue to defend their rights in a jurisdiction where they are registered. Note that the fact they appear to be UK-based tells you NOTHING about where they have registered trademarks. Companies often register in many countries planning to do some business there.

Are the names similar enough to cause confusion on the part of potential customers? Enough to cause him / her to buy from the wrong vendor? This is a legal judgement question, not wise to ask amateurs for the answer.

Are the two companies trading it similar goods and services? In this case, it appears yes.

And many more.

This all reinforces the need to research the potential name of a new company (and products) before using it. That might be your sister's best bet. Choose a new name, get it searched properly, then switch. Often in cities there are business development agencies who can point you to how to get this done as inexpensively as possible (not usually free). This should not require an expensive lawyer; defending a lawsuit will!!

Text
registration = not needed

you are right about the fact in that the name doesn't entitle you to the right to use it in trade.