Classmates.com going after me for trademark. What to do?

Not sure why you would want to keep a domain that you could never use, but the alleged "infringement" has already occurred. Taking down the site wouldn't erase what has already happened. They could still take action whether or not you do anything. Just sitting on the domain name is cybersquatting. If you forwarded the domain to their site, I guess it would remove or lesson a claim of actual damages, but you're still going to have control over a domain that they believe is infringing upon their trademark.

I doubt they are going to agree to let you keep the domain at this point. They would need to draft up some sort of legal licensing agreement and then monitor your site to make sure it wasn't being used again. It's just not worth it from a financial standpoint, it would be cheaper just to file a WIPO action against you.

I think your only options are to retain legal representation and be prepared to fund a legal fight or just turn over the domain to them. Generally speaking, they would probably just file a WIPO and not sue you (although they could). You could do nothing and wait to see what they do, but you are assuming some financial risk, and if you aren't going to fight an action, just turn it over to them and take the small amount they have offered and not worry about any legal action.

 

I would have love to take them to court just for fun.
They have a strong case though, since they trademarked "classmates"

I have serious reservations against such trademark laws though. I mean can just look up the oxford dictionary start applying for trademarks on all meaningful words..

I would have understood if it was clazzmates or something like that..

What if someone want to start a forum for their classmates like UCB-classmates?
Will it still infringe on the trademark...

I think, with a good lawyer you do stand a chance.. Try to find some Idealistic Pro-bono type of lawyers.. WHich is farfetched though.. Maybe you will find a rainmaker

 

"I have serious reservations against such trademark laws though. I mean can just look up the oxford dictionary start applying for trademarks on all meaningful words."

You can't do that. You can't even apply for a trademark unless you are already using it and only in the classification you are using it (there are over 40 different ones). You also have to establish first usage and can't trademark generic terms for their common use (i.e. apple as a fruit - but apple as a brand of computers is unique) so you can't trademark a term that is already being used in a classification and then turn around and ask them to stop.

"What if someone want to start a forum for their classmates like UCB-classmates?
Will it still infringe on the trademark..."

Still likely trademark infringement. USB-Alumni wouldn't be infringing upon classmates.

Classmates.com was first to trademark the term for their business model. They were the first ones to think of having a website that allowed former classmates to interact using the name "classmates". If someone else had been using the idea first, they could have contested the trademark (for 5 years after publication). Even if they didn't contest it, they couldn't be stopped from using it IF they were using it before classmates.com in a similar way (although usage would be limited from expansion).

 

That sucks I hate to see cases like this. I mean obviously you're not a threat to them. Some cases like this I'm just left saying why.

 

Just chill!
The dont own the word classmates. Unnecessary......

 

What the hell is happening nowadays...
For a legal entity to have a dictionary word as property like classmates is absolutely hideous.

These things utterly disgust me.

Soon enough I'll trademark the words: A, The, an, Company, Inc, etc.


All the best man, and don't let these sort of idiots get the better of you.

 

Tell your lawyer to get ready. Also, try to get someone from classmates to punch you, then you can press assault charges.

 

Intellectual property, anyway. But a trademark doesn't necessarily grant them
absolute exclusivity for any other and all usage of the word or so, although it
doesn't stop some from believing otherwise.

While I can somewhat understand some people's (sometimes misguided) anger
over something like this, we all encounter samples of this every other day. We
use Tide to wash our clothes, load up on gas at Shell, or even see Caterpillar
equipment digging down the street.

Dictionary words cannot be used as trademarks for their dictionary definitions.
However, TM laws and court decisions allow them to be used distinctively out
of their normal meanings.

For instance, there's what's called arbitrary trademarks. Arbitrary trademarks
are those whose words have no relation or logical meaning whatsoever to the
product, yet the public has associated them. Tide is arbitrary for detergents,
while Shell is arbitrary for oil products.

Then you have suggestive trademarks, which suggest a feature of the words
or so towards the product in question. Caterpillar can be suggestive for slow-
moving, lumbering equipment. (kinda like caterpillars are slow moving. )

The point is that such words we use every other day can become trademarks
as long as the market has learned to distinctively identify them as the source
of the product in commerce. That mark is responsible for the party gaining its
commercial success from it, and is responsible for the market learning to trust
in that source to continually provide it.

Given the inherent responsibilities from it, trademark holders know they must
protect and enforce their marks or risk losing it. Worse, they also risk losing its
hard-earned trust from their customers.

But...if you insist such words shouldn't be trademarks, then you'd better stop
using any of those products, even if they helped satisfy your desires or helped
make your lives easier.

 

Fair enuff.. No mood for a debate.
Just one question.
Apple = Fruit
I am sure we a good lawyer can argue that Apple cannot be trademarked for an "Apple Juice" company as well

I don't see any reason why that cannot be applied to "classmates"

I would have understood if Classmates were a Furniture Brand, and the guy here was using classmates-forums for a forum that sell Furnitures... that too of the classmates brand...

I would love to see the this lawyer in court..

If you think ucb-classmates would infringe on the trademark, then the existing trademark mark law will surely be rewritten.
I am talking common sense here, and I don't know if you have a background in trademark laws, but I can sure challenge those laws

 

I feel Just Ignore It
Its Not A Company Name
Its Quit Common Word And No 1 Can Own This Kind Of Word

 

mjewl is totally correct.. They are protecting their own trademark.. Let me ask you this, did you make a Xerox of that letter? In this sense the term Xerox has been made to be a generic term as it pertains to making a copy.. Now, this really is what Classmates is concerned about.. I wouldn't turn over the domain to them.. Rather, just let it expire. Don't ask for money, just put of a 404. This may lead to other legal questions, but, I certainly wouldn't just hand to them.. But, that is because I'm vindictive like that... And that does get me into trouble.

 

They seem to have few things trademarked.
http://tess2.uspto.gov/bin/gate.exe?f=doc&state=1uenf6.2.18

Nigel

 

Perhaps you could share your legal arguments? Remember, their rights to "classmates" is cast in stone. The period of contestability has long since past. You can't used "classmates" in a domain if the usage of the site is the same or similar to the trademark holder.

What you think is fair isn't the same as what the law is. Too many people make that mistake. The guy who formerly owned Madonna.com found out the hard way. It's not just the name, but how it is used. The guy spent over a million in legal fees and lost. He was forced to turn over the domain to the singer - who now owns the site.

I wonder how many people saying "don't turn it over" would be willing to put up their own money to wage a legal battle on principal? If anyone wishes to put up $30K or so, you'll have no problem finding people who will take you up on your offer. It seems everyone wants to fight on principal with OPM.

 

Heh, even common sense isn't as common as some people like to believe.

 

Have you tried writing them back and asking if they're open to a compromise?

 

You are blowing things out of proportion. Do you have any IP experience? The legal system in the US is far from out of control.

You mean like Windows? Or Tide?

Trademarks are based on USAGE. Also trademarks cannot be descriptive in nature. You couldn't run a gas station called "Gas Station" under trademark protection. I could run a gas station called "Microsoft Gas" though as MS doesn't have rights under that usage.

Irresponsible comment from someone not familiar with US Law and India is notorious for it's lack of law.


Your usage of classmate-forum.com is DESCRIPTIVE and they can't claim otherwise imho.

http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0825.html

And USPTO shows their TM went through January 22,2008. It's very recent.

Get a lawyer if you want to keep this. It appears that Classmates.com has decided to become aggressive.

My personal opinion is that their TM is very questionable and your usage is straight forward and descriptive in nature. Legally you're protected but financially you are not.

EDIT: Alright I found their obvious hole in the USPTO files.

Their Word mark says this:

Their drawing mark says this:

Notice the difference? The word mark which MUST NOT BE descriptive doesn't use the terms school or college. That's because they CAN'T. However they will certainly try the bully tactic and imho. You should point out that you aren't scared of them and that you are extremely comfortable with your own usage. I wouldn't fold imho but then again...I have balls and don't need a lawyer to commit my own legal actions or defense.

 

My suggestion would be to blow this out of proportion.
Write about it, digg it... Ride the publicity.

And build your community.

(From a Forum Business Sense, the domain name is too broad to be successful though.)

Shoemoney was offered sprintusers.com
He didn't buy it because of the use of the tradmarked sprint in the domain.

Lee Dodd bought it and the rest is history.. 100K in profits a months or thereabouts.
Forget this stupid discussion.
If you think you can build a business around it, go ahead and hire a lawyer.. SEE THE LOOPHOLE ABOVE.

If you feel you can't build a profitable business around it and you are just here with the hope that classmates.com will buy it from you for 1 million, then I have been wasting my time here..

 

I did contact them. I told them that as a matter of goodwill I'd temporarily disable the site and add a disclaimer until my attorney formulates a response or tells me to do otherwise.

I DO think a business can be built around this idea. That's why I registered the domain and set up the forum in the first place. I think there is a need for a message board that current and former classmates can connect without all the extra junk (and fees) that comes with sites like classmates.com, etc.

I welcome publicity on this. I think both entrepreneurs and consumers alike would benefit from hearing this story.

 

"Also trademarks cannot be descriptive in nature."

Says who? Of course they can. "Best Buy" is trademarked. As one of the largest advertisers on the internet, classmates can easily demonstrate secondary meaning. "Microsoft-Forums" or "Barbie-Doll-Forums" would clearly be infringement. You can add words to a trademark protected term to make it descriptive and get around infringement.


"And USPTO shows their TM went through January 22,2008. It's very recent."

CLASSMATES.COM
Filing Date December 14, 1999
Published for Opposition April 2, 2002

CLASSMATES
Serial Number 76258327
Filing Date May 17, 2001
Published for Opposition December 31, 2002

CLASSMATES
Serial Number 76258328
Providing on-line electronic bulletin boards,
Published for Opposition November 19, 2002