I started a website for a client and we named it based on keyword research, bestvacuumcleaner.net My client received a fax today, 6-7 months after we have been in business from an attorney at www.ecommerceattorney.com (?) that we are violating the trademarked name of bestvacuum.com and we must vacate the domain. Does anyone have experience in this field? It seems like they are bluffing, I don't see any connection between bestvacuum.com and bestvacuumcleaner.net
I think they are bluffing, but if you are worried, contact an attorney to see what they say. I think it would have to be the very same name but if it goes to court they could win. The company Auto Zone was originally Auto Shack until Radio Shack sued them and won and they had to change the name. I am not sure how it applies Online though.
ignore it 100%, whoever this person is hasn't got a leg to stand on. The names aren't similar at and the extension is different. It's like Burger king couldn't sue a place called Kings Burgers, even if they wanted to.
This is what he says we are violating in the letter; His client has trademark to bestvacuum.com, us reg#3214717 trade name infringement, trade mark dilution and unfair competition under the following; 1. the lanham act, 15 USC, 43(a) 2. The federal trademark and dilution act of 1995, 15 usc, section 1125c 3. state unfair and deceptive trade practices acts; and 4. the general common law they request that we comply with the order within 10 days and give them written assurance that we refrain from any and all future use of the mark "best vacuum"
They're definitely registered: http://tarr.uspto.gov/servlet/tarr?regser=registration&entry=3214717&action=Request+Status My understanding is, if they've trademarked it, they have to go after you. Best contact your lawyer. http://www.uspto.gov/
Your mark isn't "best vacuum," so there's nothing to comply with. Their registered trademark is just "bestvacuum.com" - you'd have to use their full name in that form for it to be a violation because they chose to operate with the .com as a part of the trademarked business name. "Best vacuum" is actually trademarked to someone else for what looks to be an offline company.
Thanks! Do you have a link to the trademark for "best vacuum"? how do I search for it? haha.... look what i just found by googling: trademark, "best vacuum" http://www.muddlawoffices.com/cases/iandesign.htm http://www.muddlawoffices.com/cases/Ian_Design/SUMF_Response_Ian.pdf and here is the judges ruling on the above case; http://www.muddlawoffices.com/cases/Ian_Design/Order Ruling on MSJ.pdf
well I faxed the judges ruling to the attorney just to remind him in case he forgot.... I hope that's not being too provocative
Glad you did your research, seems like they are a mission to aggravate anyone who has any name like theirs...I think you did good by sending it to him
Even common sense isn't so common. A domain name per se doesn't necessarily infringe a trademark outright. But in this instance, its first two words and its currently showing a parking page for competing vacuum cleaning products is indeed potentially infringing. However, if you feel this is worth fighting, then stop posting here and go see a lawyer as allout posted. And "congratulations" on receiving a C&D from one of few attorneys who specialize on such. I wonder how much research and/or thought was given before making a post like that. Such posts can potentially "mislead" people into developing a false sense of security. Kudos to flawebworks for taking time to research. And yes, it's a registration that's been recently granted trademark status. Some of you might want to think and/or look around before making any more possibly stupid rants. What you think means nothing if any applicable law and or decision says otherwise, and there are such. Parties who have spent considerable time and money branding and marketing their products into commercial successes are obligated to protect their rights. If you don't respect their rights, then certainly they've no reason to respect yours.
Dave, that is not a parking page, it's an operating business. We are not trying to build off of bestvacuum.com, we developed a site to sell my clients products which he IS LICENSED BY THE MANUFACTURER TO SELL. He is a bricks and mortar operation with just as much right to his domain as others have to theirs. If you read the judges ruling on the case with bestvacuumcleaner.COM you will see that "best vacuum" is not a brand and is a puffer term for a product. These are great documents by the way, I recommend everyone spend a few minutes to go through them. A
Dave, you're missing an important point. The company who sent the C&D is saying they can't use the term "Best Vacuums" in their domain. BestVacuums.com has no trademark over that phrase... only their domain, b/c that's how they chose to brand themselves (they're not branding themselves as "best vacuums." They're branding themselves specifically as BestVacuums.com. Yes, they're required to actively try to protect their trademark in order to maintain it. But that doesn't mean they actually have any legal right to insist that someone stop using that keyword phrase. By that logic, anyone using a keyword-rich domain could register it as a business name / trademark and claim no one else could use those words in a domain. It's illogical and won't happen, as you can see from this court case. It would be like if About.com tried to say no one could start a domain with the word "about" to create a content site, if that topic is covered in their network. Or if Buy.com tried to say you couldn't include "buy" in a domain b/c they may sell the same product somewhere on-site. In this case, all the issuing company is really able to do is create a bit of a paper trail in case they're accused of not actively trying to protect their trademark later on. That has no bearing on the OP.
That's an interesting detail you brought up. If you mean your client was given a license by the party in question to sell that product, then one suggestion I can offer is have them check their agreements. If you're referring to the Best Vacuum v. Ian Design decision from 2005, from what I understood it's because the Court decided that Best Vacuum had not yet developed secondary meaning or acquired distinctiveness. A lot is bound to happen from that time to today, and there's no assurance a court will see it the same way they did if this reaches that point. I read what you mean. There's always the possibility a party is exerting their trademark rights to possibly establish "carte blanche" over all others, like one "stealthy" frivolous litigant seems to enjoy doing. Thing here is, the party in question seems to believe there'll be a likelihood of confusion among consumers upon seeing the domain name, which, of course, is what trademarks seek to prevent. However, the OP adding that detail just above could make things a wee bit more complicated.
I think this is crazy. I'm not saying whether they could get the domain name or not from you but if they could that would be really sad. It's like saying they have a trademarked domain about vacuums and so that means nobody else is allowed to have a site that has any similarities. I mean if someone trademarked a Flash Game Site and said any other similar website (which there would be tons of) have to be given to them. If they went to court and got this domain from you there would be another 100 domain names out there that they could take. The laws are so stupid. All the time we see the person who wins a domain from someone in a court is just richer than the other person. Whoever has the better lawyer wins. There is always a loophole in a set of laws, it's just whether you have a good enough attorney to find these flaws. These people who want to take your domain shouldn't have a leg to stand on and yet they could win it from you if they took you to court with a good lawyer. Anyways just my two cents.
Well, it so happens there are parties with deep pockets who truly believe that having a trademark gives them absolute exclusivity over everything else. But we also have people who seem to think they have a right to register and use a domain name to possibly get a free ride on someone else's hard work. Then again, we're only seeing the OP's side of it. What about the party's? Disputes happen every day. That's what dispute resolution providers are for.
There are definitely cases where it's appropriate to go after someone's domain. For example, I may be attempting just that next week with someone who registered a very similar domain to one of mine and ripped my entire site (design, content and all) and published it to profit from porn ads they placed on it. There are cases like that where people blatantly try to profit from someone's name, in which case they should certainly have to forfeit it. But having a domain with similar keyword phrases and running independent businesses isn't quite the same thing.
This is interesting! If it does move forward it may be worth hiring the same attourneys. keep us posted!