My family has owned the domain name Muckboots.com since July 2002. We operate an on-line business selling Muck Boots made by The Original Muck Boot Company, a Honeywell Safety Products company. Honeywell recently told us to stop selling competitive brands on our website, claiming it was a violation of their intellectual property rights, since the phrases "muck boots" and "muckboots" are part of their trademark. We've been selling other brands of footwear on Muckboots.com for 3 years, including some of Honeywell's other brands (XtraTuf, Ranger, Servus, etc.)! Do they have a legitimate complaint?
Commercial Real Estate Attorney
If they own the trademark to muckboots and they used muckboots before you did, they may be able to stop you from using muckboots.com. Without getting into the legalities of it, why not just sell muckboots on the muckboots.com site and establish a related site for the sale of other products? You should not discuss this on an open forum however as you may be placed into litigation if this is not resolved. Please feel free to contact me or any other attorney on Avvo who is willing to offer a free consultation.
The answers given are informational only and do not constitute legal advice. Please feel free to contact me if you want to obtain legal advice from me.
Contracts / Agreements Lawyer
Do they have a legitimate complaint? Maybe.
More facts are needed to completely review your issue and advise you. I would start by reviewing your reseller agreement you have from honeywell with an attorney.
Yes, they appear to have a legitimate complaint. They own the rights to the brand (trademark) and appear to be allowing you to use their brand (as your domain name) to sell their products. Do you have a written distributor or other type of agreement with them giving you permission?
My guess, based on limited information, is that you are likely very fortunate they are not suing you for trademark infringement; as the trademark holder has the sole right to use the brand to drive any sales. Thus, if you are selling other products which would dilute/diminish their sales, you are likely infringing their trademark.
Trademark protects in many ways and one is by advertising their brand and then showing other products. The customer goes to your site, looking for Muckboots and see's other competitive products. Instead of buying the Muckboots they buy something else. This is classic TM infringement. (Unless you have a contract with them that allows you to do so.) Think about it; they built the brand, established a reputation, and then people go to your website and buy other products?
The length of time they have allowed you to continue may provide you some protection, but I strongly urge you to hire an attorney quickly and until you have discussed thoroughly with the attorney, I would remove all non-Muckboot products from your website (or shut it down temporarily.)
Also, do not discuss any further details in an open forum such as this, as it is public domain and may be used against you.
My disclaimer is simply that Avvo already has an adequate disclaimer.
Intellectual Property Law Attorney
Ownership of a domain name does not give you the right to use that name to brand your products. The issue here is whether Honeywell is the senior user of the trademarks. If Honeywell starting using this trademark before you started selling your products of Honeywell competitors on your web-site, Honeywell might have a strong argument that you should not selling the products of these competitors on your Muckbooks.com website. This is particularly so if Honeywell registered its trademark with the U.S. Patent and Trademark Office. Honeywell can properly claim that by selling products of its competitors on your web-site, you are confusing consumers as to the source of the products shown---suggesting that they are all associated with Honeywell, when may of them are not associated with Honeywell.
You need to take this allegation seriously and you should not deal with this on your own. It is very important for you to immediately retain trademark/IP litigation counsel to negotiate with Honeywell to settle this matter. There is a very significant possibility that you will need to agree to cease selling products of competitors of Honeywell on your web-site.
Intellectual Property Law Attorney
I think Honeywell is full of crap or better put, muckety muck. You likely have them beat rather than the other way around. Whether you want to litigate them is up to you. I think there is an opportunity for mutual benefit here or opportunity for some major compensation from Honeywell if you get an attorney to properly demand it and work a deal where they end up with the mark. You need to hire an attorney than can get that for you.
Honeywell's predecessors in interest followed a familiar pattern [ WINCHESTER followed this pattern], but Honeywell's predecessors failed to close the deal. First, they registered THE ORIGINAL MUCK BOOT COMPANY with a detailed diamond design and disclaimed all the words except MUCK. When it registered, they put the (R) symbol next to the K of MUCK. Next, they registered THE ORIGINAL MUCK BOOT COMPANY and disclaimed "Original" and "Boot Company" leaving them with MUCK [legally as well as literally] Then they made the fatal mistakes. They tried to register ORIGINAL MUCK BOOT and MUCK BOOT under intent to use and were rejected as merely descriptive and abandoned the applications [8 years ago, back in 2005]. http://tsdr.uspto.gov/#caseNumber=78114959&caseType=SERIAL_NO&searchType=statusSearch That is a major obstacle for them in now trying to assert this mark against you. My guess is that application was intended as a preliminary step to set themselves up to come after you for the domain. Now they can't because they have no trademark registration with which to do it, and they even have a finding against them that they chose to let stand.
Did they "conveniently" neglect to mention to you that their alleged mark MUCK BOOT was held to be merely descriptive? [2 times, by the way]
I notice they also conveniently neglected to mention to the USPTO that they are aware of you selling other boots using the servicemark MUCK BOOTS prior to the date of their application. Hard for them to deny since they were selling to you.
Guess what? You have the right to use merely descriptive terms. And, right now there is an eight year old finding by perhaps the most respected authority in the world on the subject [The USPTO] that MUCK BOOT is a descriptive term for a boot for use in muck, a finding Honeywell fought and lost. Look up the term "res judicata" and the term "stare decisis" and you will see the problem that presents for Honeywell.
Guess what? You, not them, are the one using the term MUCK BOOTS as a brand name first. Their mark is THE ORIGINAL MUCK BOOT COMPANY not MUCK BOOT. It is not clear they have ever use the term MUCK BOOT as a mark. If they had, they would tell you so in the CDL rather than say it is part of a longer mark.
Your name is the plural not the singular, so that is another problem they face, although probably not a major distinction.
They are writing you because they need to stop you in order to have a chance to register the mark MUCK BOOT. They will LIKELY use their success, if any, against you to bolster their case and go back to the USPTO with another application and say YOU recognize their right to the name. That is where your opportunity for a deal comes up.
Honeywell also faces perhaps insurmountable laches and estoppel arguments due to your longstanding existence. Coupled with their loss of the mark at the USPTO and the finding that it is merely descriptive, I think you have the upper hand. Get a lawyer that also thinks so, and I predict some serious money coming your way.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.