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Is it considered trademark infringement if I received a trademark? Is mimicking functionality of a website illegal?

Deerfield Beach, FL |

I registered a domain name, well call www.mydomainisgreat.com and applied for a TM; so far received a pseudo mark. At the same time, a large company with a domain name (www.mydomain.com) has sent me a complaint about my domain being confusingly similar and that I'm violating its mark. Thus far, we've traded letters back and forth. They demand I give them the domain, I am refusing. They're accusing me of infringement, cybersquatting and violating the Lanham act; stating I have no interest in the domain and I'm presenting it in bad faith. Through my research, I've determined that this 'to me' isn't the case, and I plan to fight this all the way through. I have full interest & no bad faith. Am I wrong? My site does mimic functionality of their site but is completely different in design.

Now that I can add additional information I wanted to also say this. I've read a lot of cases in reference to this, but obviously I'm not a lawyer otherwise I wouldn't be here. But in my opinion, it seems they are just trying to squash the little guy and not allow any competition in the market. When I registered this domain name and the concept of the website, there was no bad faith intent. The website I've conceptualized is a local website for local businesses whereas the larger one is global. My website is completely different in its concept and design. Similarly, in the case of 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC (2006) the courts ruled in favor of the little guy stating that they posed no real threat even though their domains were similar and so was there business models.

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Attorney answers 4

Posted

Q:"Is it considered trademark infringement if I received a trademark?"
A: No, that would be the opposite of infringement, unless you received it as stolen goods.

Q:"Is mimicking functionality of a website illegal?"
A: No functionality is normally what is not protected, expect perhaps by patent.

Q"so far received a pseudo mark"
A: Wrong. You likely received a "psuedomark notification" from the trademark examiner that your mark is considered equivalent to a more normal spelling or pronunciation, so it will be examined as if it was identical, which makes your mark a "psuedomark" of the more common usage. That doesn't mean you received anything except a notice, more likely meaning your application is in trouble.

Q:"Thus far we have traded letters"
A: Without an attorney. That would make you a pseudo idiot. The only one to be trading letters with an attorney is another attorney, YOUR attorney. If you are doing it, you are likely toast due to self-inflicted damaging statements.

Q: " I've determined that this 'to me' isn't the case, and I plan to fight this all the way through. I have full interest & no bad faith."
A: Yes, you do have a fool for a client. If you are not an experienced trademark litigation attorney you sound like chum for the shark circling your nest egg. If you don't get a shark repellent expert (another shark, another trademark attorney) that fight "all the way through" will be very short and painful or maybe long and more painful. Don't be a fool. Get an Attorney and get one quick and QUIT TRADING LETTERS. Trading letters is about the dumbest thing you could do as an accused infringer.

Q" My site is completely different in design"
A: In your "expert" opinion? Seems the shark circling your assets does not agree. Get an attorney or get eaten. Think I'm kidding. Do this on your own and come back and tell us how it went!!

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.

Asker

Posted

I've read many of your comments and I enjoyed them... now that I'm a victim one, I am not so much enjoying it! (jk, I do!) In any event, You're right, I agree that an attorney would be best. The letters I've written aren't damaging in any way and are merely defending myself from accusations. This isn't just about infringement as I stand strongly that I am not infringing anyone; this is about them bullying me and honestly, if it comes down to court, I'm willing to take that chance. Thank you!

Bruce E. Burdick

Bruce E. Burdick

Posted

Sounds like you have a good attitude and a sense of humor. Nope, your letters are almost certainly damaging if an attorney did not write them. Hopefully for you not too damaging! Bullying is possible legally with trademark registrations of well funded companies. It's one of the ways big companies raise the ante to play the game. Bullying can also backfire on a big company. http://openjurist.org/561/f2d/1365/big-tire-dealers-inc-v-goodyear-tire-and-rubber-company Sure you can play the self-righteous victim, but when it get to court it becomes time to put up or shut up and you might have to put up six figures to defend yourself or more if the other side so chooses. If you have the bigger war chest you may prevail, otherwise likely not. Just be sure you are not talking big and carrying a little stick, or you may get clubbed. Even if you are right, you don't want a Pyrrhic victory, do you?.

Asker

Posted

Hello Bruce, thank you! The company doing the bullying is definitely well funded and a very large company of whom I'm sure you no doubt know of. I will say that I did have a tiny bit of help from an attorney when I wrote the letters; so damaging should be at a minimum (hopefully!). In truth, going to court is the last thing I want as I'm sure it may be the last thing they want as well. Trials for these cases are quite high in costs and although the sharks don't like my domain name/website, its value is far from worth spending the possible 100's of thousands of dollars it will cost to take me to court. My site has no value at all at this time other than the name and its content of which may compete with their services. I make a great salary and live very comfortably, and on the side I enjoy buying domains and developing websites. It isn't my job, but I enjoy doing it. I own about 300 websites/domains and I often buy, develop and sell them. It was the ultimate goal of this site as well to be eventually launched, then sold. With that said, I have put some time, effort and money into developing this site and to its success. So for me, giving in to their demands (which are to just give them the domain), ultimately avoiding any legal confrontation may be the easy way out, but its not within me to do so. I don't have deep pockets as they do that is for sure, but I also don't have much to lose by playing the game a little. I doubt they want to take someone to court who they would never recoup their legal fees from. It may be them who would have the "Pyrrhic victory" not I. I haven't heard back from them since last week and the last letter written which was 75% from a lawyer, was basically calling their bluff. I'm more than happy to share with you the intricate facts of this outside of this site if your interested. Either way, I will let you know the outcome! Thanks again!

Asker

Posted

Hello, I wanted to follow up with everyone here on the site to let them know what has happened since the last time I received everyone's great advice. Again, I want to reiterate my appreciation for everyone's advice, this site is great and I recommend it anyone in need of its service. Since last speaking on this site, the opposing counsel offered a settlement of 'X' amount of dollars to which I declined and counter offered. The opposing counsel then made another offer which was double the amount but still way too little in comparison. The first offer was $50, the second being $100. I again said no and further stated that I would not take less than my previous counter offer. Since the last email I sent stating the above, which was January 25th, I have not heard back from them. Its been nearly a month now and no answer has been sent, no offer been sent, nothing. No letters have come in the mail from any establishment and no case, as far as I can tell, has been filed. Is it safe to assume (even though I hate assuming anything) they've walked away? Could the attorney be awaiting approval on the amount to be settled? Or perhaps its not worth them fighting over? I would imagine if they were going to sue, I would have received something by now?

Posted

Your posting is less like a question, and more like a pseudo-legal opinion by a non-lawyer. However, there appear to be some actual questions in the post.

"Is it considered trademark infringement if I received a trademark [registration]?" No. Infringement is based on the accuser's actual use of the mark (although one must actually use a mark in commerce before the USPTO will issue a registration for that mark).

"Is mimicking functionality of a website illegal?" It depends. Cannot be answered in the abstract.

"I have full interest & no bad faith. Am I wrong?" Maybe. Consult with a trademark attorney about the specific facts of your situation. Good luck.

This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.

Asker

Posted

Hello James, thank you for your response! I appreciate the feedback very much.

Asker

Posted

Hello, I wanted to follow up with everyone here on the site to let them know what has happened since the last time I received everyone's great advice. Again, I want to reiterate my appreciation for everyone's advice, this site is great and I recommend it anyone in need of its service. Since last speaking on this site, the opposing counsel offered a settlement of 'X' amount of dollars to which I declined and counter offered. The opposing counsel then made another offer which was double the amount but still way too little in comparison. The first offer was $50, the second being $100. I again said no and further stated that I would not take less than my previous counter offer. Since the last email I sent stating the above, which was January 25th, I have not heard back from them. Its been nearly a month now and no answer has been sent, no offer been sent, nothing. No letters have come in the mail from any establishment and no case, as far as I can tell, has been filed. Is it safe to assume (even though I hate assuming anything) they've walked away? Could the attorney be awaiting approval on the amount to be settled? Or perhaps its not worth them fighting over? I would imagine if they were going to sue, I would have received something by now?

Posted

Q: "Through my research, I've determined that this 'to me' isn't the case, and I plan to fight this all the way through."
R: No you don't. A typical trademark infringement lawsuit with domain name involvement costs about $200K to litigate through trial. Then add another $50K for post-trial briefings and, perhaps, $50K for an appeal. So, no, you cannot "fight this all the way through" and the other side's attorney knows this. Your ONLY play is to capitulate to the other side's demands [in a way that does not expose you to monetary liability] or to hire your own trademark attorney to evaluate and handle the situation -- which will likely be to settle the dispute in a way that does not expose you to monetary liability.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

Asker

Posted

Hello Daniel, I agree going to court would not be a path I would choose happily however, the site I've designed and published I have put a lot of time and effort into its success and I am not one for rolling over to a larger company just because they don't like it. It is my hope that we can settle amicably without having to go to court and spending not just the money but even more valuable, my time. Thank you very much for your answer!

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Hope is not a strategy. When I'm opposite someone in a dispute who I know cannot afford to litigate there is no legal reason to settle on amicable, reasonable terms. Because the party who cannot afford to fight cannot fight the "settlement" negotiation turns very quickly into me delivering a list of ultimatums. Which the other side has no choice but to accept.

Asker

Posted

You're right, hope isn't a strategy nor is it mine. I know the facts which you state, but I also know that what they are fighting for isn't worth the 100's of thousands of dollars it will cost them to take me to court. What they want is worthless at this time to them and to the world really. Its only value is to me and the time/money I've put into it personally. I could see them taking me through litigation if I were making millions of dollars on the site, but I'm not nor will I ever I'm sure.

Asker

Posted

Hello, I wanted to follow up with everyone here on the site to let them know what has happened since the last time I received everyone's great advice. Again, I want to reiterate my appreciation for everyone's advice, this site is great and I recommend it anyone in need of its service. Since last speaking on this site, the opposing counsel offered a settlement of 'X' amount of dollars to which I declined and counter offered. The opposing counsel then made another offer which was double the amount but still way too little in comparison. The first offer was $50, the second being $100. I again said no and further stated that I would not take less than my previous counter offer. Since the last email I sent stating the above, which was January 25th, I have not heard back from them. Its been nearly a month now and no answer has been sent, no offer been sent, nothing. No letters have come in the mail from any establishment and no case, as far as I can tell, has been filed. Is it safe to assume (even though I hate assuming anything) they've walked away? Could the attorney be awaiting approval on the amount to be settled? Or perhaps its not worth them fighting over? I would imagine if they were going to sue, I would have received something by now?

Posted

Regarding the cybersquatting claim, a company must have a "distinctive" mark in order to claim cybersquatting. I doubt if the other company has any trademark rights in MYDOMAIN (if you are giving me their real domain name) for a business that helps people register and transfer domain names. It is most likely generic or descriptive of their services and therefore not capable of protection. Which woud also probably rule out any trademark infringement claim. Contact an attorney to help you verify this.

You really, REALLY, need an attorney to check the other company out and help you respond to these claims.

Jon Kenneth Perala

Jon Kenneth Perala

Posted

If the other company has been using MYDOMAIN for a number of years, it is possible the USPTO could allow the mark to be registered. Again, contact an attorney to fully check out the other company's claims.

Asker

Posted

Hello Jon, thanks for your input! The domain I mentioned in my answer isn't the actual domain but something along those lines, as part of the rules of the site, I tried to make the answer blind so that no personal information was shared. I don't mind sharing more information if your interested to learn more though.

Jon Kenneth Perala

Jon Kenneth Perala

Posted

Feel free to contact me with more details. There is no charge for initial consultation.

Asker

Posted

Hello, I wanted to follow up with everyone here on the site to let them know what has happened since the last time I received everyone's great advice. Again, I want to reiterate my appreciation for everyone's advice, this site is great and I recommend it anyone in need of its service. Since last speaking on this site, the opposing counsel offered a settlement of 'X' amount of dollars to which I declined and counter offered. The opposing counsel then made another offer which was double the amount but still way too little in comparison. The first offer was $50, the second being $100. I again said no and further stated that I would not take less than my previous counter offer. Since the last email I sent stating the above, which was January 25th, I have not heard back from them. Its been nearly a month now and no answer has been sent, no offer been sent, nothing. No letters have come in the mail from any establishment and no case, as far as I can tell, has been filed. Is it safe to assume (even though I hate assuming anything) they've walked away? Could the attorney be awaiting approval on the amount to be settled? Or perhaps its not worth them fighting over? I would imagine if they were going to sue, I would have received something by now?