Received order to cease & Desist today for Trademark Infringement

Hi guys!Sorry, I am new here, and I apologize if this is a recent topic. I couldn't find it anywhere in the forum.Today I received an email to Cease & Desist my beauty blog for Trademark Infringement on a company. The letter was written by the CEO of the company. First off, the site that wrote me this letter sells beauty products. I had NEVER heard of this site before today. I do NOT sell beauty products and named the blog after my two dogs. I do however talk about favorite TV shows, clothes, beauty products, perfumes, etc. Clearly, I do not want to give the name, so I change the name for example sake - my blog is ApplesAndOranges.com - the name of the company in question is OrangesApples.com The letter stated: We are the proprietor of trademark registration no.xxx. Details of this registration are set out on the attached schedule, marked "A".Widespread use of the OrangesApples trade mark has been made, to the extent that this trademark has acquired an extensive reputation and goodwill. The OrangesApples trademark is, accordingly, also a well-known mark for all relevant purposes of trademark law.It has come to our attention that at least as of this past September, 2011, you are publicly using and/or have applied to register the “Apples and Oranges” trademark, and as of June 2011 you have registered a domain in the name of ApplesAndOranges.com. It has also come to our attention that you have been actively using the name Apples and Oranges on website and social media materials in several instances since then. This trademark is confusingly and/or deceptively similar to our Oranges Apples trademark and also constitutes a reproduction or imitation thereof. You are also using this name in direct association or by mentioning the name associated with : (about 100 examples of beauty products)In the circumstances, your use of the “Apples and Oranges” trademark, or your use of the “Apples and Oranges” name , will constitute an infringement of our registered and common law rights.In the circumstances, we demand that you immediately:1. cease and desist all use of the trademark “Apples and Oranges”;2. deliver-up for destruction all material to which the “Apples and Oranges” trademark or any other mark confusingly or deceptively similar to our trademark has been applied;3. withdraw, cancel and/or delete any corporate names, domain names, social media names, trademark applications and/or trademark registrations for or including the “Apples and Oranges” trademark;4. undertake, in writing, never in future to make any use of the “Apples and Oranges” trademark without prior written authority from us, whether within any corporate name, trading name, trading style, domain name or otherwise.We will await to hear from you by no later than close of business on February 29, 2012. Acting in good faith, we are giving you 60 days to undertake any investigation required on your part to understand the merits of our claim and undertake all necessary actions on your behalf to cease all activities described above. If you do not cease the activity by this date, you will be deemed to be “knowingly” or “willfully” violating our rights, which will result our company seeking damages against you for trademark infringement.This is written without prejudice to our rights, all of which are hereby expressly reserved.Is this something I should take serious? I will NOT be putting in writing that I will not use the names of my dogs on the internet again.... I'm feeling very FRUSTRATED!

 

It doesn't matter if you named your site after your dogs, your children, you best friend, etc. The only thing that matters if you are using their trademark (or similar) in a classification (usage) that their mark is in AFTER they were using their mark in commerce. It also doesn't matter that you had never heard of them before. It is your obligation to check for prior usage BEFORE you register a domain. It is up to you on what action (if any) you take. They can sue you and seek damages as well as treble their legal fees (since their mark is registered). You could potentially be looking at tens of thousands of dollars or more. If you don't think your mark is infringing upon their rights, I would seek advice from an IP attorney. If they do sue you, and even if you win, you will still be out your legal fees. Is the domain worth the possible expense to you?

 

As The previous poster has stated, you may have skated on thin ice and it cracked.

The best thing that YOU may do for yourself is to get proper legal advice from a lawyer.

 

Weather they are right or wrong you got two options:

1) Ignore it and continue until they sue you (cost the other part $1,000's to do so).
2) Simply fix the problem they have with you.

 

Did you use the whois protect? If you did, just ignore that email.

 

Whois protection does nothing. Ownership details will be made available with a court order or UDRP - and even a threat by the TM can cause some registrars to remove the whois protection and make the details public.

 

Listen to what mjewel says. If your site's name has some value to you, discuss the issues with an IP lawyer. If it is not worth spending a few bucks on a lawyer, then cave in now and save money and aggravation.

 

I would have fought them period. You really cannot tradename something as common as apples and oranges. The only thing I don't know about the case is if the person accused talks about similar products that the company makes.

 

He used Apples and Oranges as an EXAMPLE only.

Yeah, actually you can.

 

It won't hold up. You can put the paperwork in but I'm pretty sure any court would disagree.

 

Well, maybe you have heard of the computer company called Apple. They already have trademark on the term "Apple" for many different categories of goods and services so it is not just some speculation but it is already a well established fact.

Common words are often used as trademarks. While you could not trademark the word "apple" for the selling of the fruit as that is generic, you could use that name as a trademark for many other products unrelated to the common fruit usage.


http://en.wikipedia.org/wiki/Trademark_distinctiveness (apple is specifically discussed)
www.uspto.gov/trademarks/basics/BasicFacts_with_correct_links.pdf
http://www.chillingeffects.org/question.cgi?QuestionID=216

 

How many people has apple taken to court and won for using the word Apple?
That's what I'm talking about.

The user above seems to have seen that their site is unrelated to the other companies product line. We would have a better idea if they used a real name and provided some links, so I kind of wonder why they even asked the question. lol

 

The thing people need to keep in mind is that tradenames are not written in stone, you can fight back if you feel you're in the right. The problem is that if a big major corp comes after you the little guy, you might not be able to afford the court costs.

I have to ask you which words did you use? Give some details.

 

Apple's mark with respect to computers is very strong and they would not lose if someone were to try and use it in reference to computers. That is textbook trademark law. I am not sure why your argument is to be taken seriously when it is contrary to established trademark law and I already gave you citations to three sources that explain it in detail.

The Wiki Source:

ChillingEffects:

I have no idea whether Apple has had to go to court over a trademark because frankly I don't want to look it up because it is irrelevant. If they never won in court it could be because they were never challenged so it would be meaningless to know if they never won. What would matter is if you could point to them ever losing a trademark case in court over the use of the word Apple. Please feel free to show us one.

 

There's a difference between a tradeNAME and a tradeMARK, the latter which does give legal protection
to some degree.

 

you're mssing the whole point.
PAY ATTENTION
FOCUS

The person who started the thread is concerned because they don't consider their blog to be in conflict with the other companies trademark. From their view their blog is something totally different.
If you were to use your Apple example we would say Apple does computers and a court would recognize that, But if someone writes a blog named Apples and talks about fruits, exercise, perfume, and general stuff Apple itself would not have a case because it's NOT COMPUTER RELATED NOR IS IT RELATED TO IT'S BUSINESS.

 

lol almost like no protection at all. that's why online has become so crazy, because now you have middle men telling you when someone has violated someones copyright, or trademark, without the copyright or trademark owner even knowing about it. a hosting company, paypal, etc will shut you down based on these middle men. i'm gonna bet that even if you had an escrow setup for the copyright holder that you would be shutdown based on a middle man, it's all just insane to me.

 

Actually it is you missing the point. The OP's question was months ago, he made one post and never came back. I took issue with your addition to the thread saying that Apple can't be trademarked, which is total nonsense.

Now you say 'well if they are not talking about computers but something entirely different it is okay' No shit Sherlock, that is why trademarks are for classes of goods. So if you have the class of computer goods trademarked, you are not going to be able to stop someone writing about exercise (another class of goods) and calling it the Apple Workout. Way to stake out an obvious position that nobody else was saying was not true.

 

you're totally in left field the person used apples and oranges as an example at first i thought that it was the actual name of their blog and that the company who had a problem with it had a similar name. you brought up the apple computer issue, which if you had been following the posts we were basically saying the same thing as far as trademark is concerned.

where we differ is that you are talking about trademarks in theory, and i'm talking about reality. when i say a trademark does little what I mean is that you pay your money and that's that. if someone else uses your trademark you have to pursue it. meaning if you do nothing the person could very well take your trademark. whereas with a copyright you could come back years later and get money. you cannot come back years later with a trademark and get your name back.

the other thing to consider is if someone else were using a trademark before you and you come along and get the bright idea to do the paperwork, it doesn't mean that the trademark is yours yet. the other person could be using the name and that makes it theirs, but again its a thing where one of the parties has to approach the other.

 

Thanks got it and responded. For everyone read this oh and also understand that wikipedia is not a good way to document things, because wikipedia can be edited by anyone and changed at any time.
This is taken from the Harvard Law School

4. How do you acquire rights in a trademark?
Assuming that a trademark qualifies for protection, rights to a trademark can be acquired in one of two ways: (1) by being the first to use the mark in commerce; or (2) by being the first to register the mark with the U.S. Patent and Trademark Office ("PTO"). 15 U.S.C. � 1127(a). Remember, however, that descriptive marks qualify for protection (and can be registered) only after they have acquired secondary meaning. Thus, for descriptive marks, there may be a period after the initial use of the mark in commerce and before it acquires secondary meaning, during which it is not entitled to trademark protection. Once it has achieved secondary meaning, trademark protection kicks in.

The use of a mark generally means the actual sale of a product to the public with the mark attached. Thus, if I am the first to sell "Lucky" brand bubble-gum to the public, I have acquired priority to use that mark in connection with the sale of bubble-gum (assuming that the mark otherwise qualifies for trademark protection). This priority is limited, however, to the geographic area in which I sell the bubble gum, along with any areas I would be expected to expand into or any areas where the reputation of the mark has been established. So, for example, if I sell pizza in Boston under the name "Broadway Pizza," I will probably be able to prevent late-comers from opening up a "Broadway Pizza" within my geographic market. But I will not be able to prevent someone else from opening a "Broadway Pizza" in Los Angeles.
The other way to acquire priority is to register the mark with the PTO with a bona fide intention to use the mark in commerce. Unlike use of a mark in commerce, registration of a mark with the PTO gives a party the right to use the mark nationwide, even if actual sales are limited to only a limited area. This right is limited, however, to the extent that the mark is already being used by others within a specific geographic area. If that is the case, then the prior user of the mark retains the right to use that mark within that geographic area; the party registering the mark gets the right to use it everywhere else. So, for example, if I register the mark "Broadway" in connection with the sale of pizza, the existing "Broadway Pizza" in Boston retains the right to use the name in Boston, but I get the right to use it everywhere else.