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

Seriously, call your attorney on Monday and get legal representation. You are getting a lot of bad information on these forums from people who have absolutely no trademark experience. I've been involved in trademark litigation for over 15 years and you shouldn't even be talking to classmates.com if you intend on fighting this. Everything you tell them can be used against you.

 

Trust me, I'm not taking anything written on this forum as legal advice. My email was simply "site is disabled at the moment, my attorney will contact you, bye". It's the only email they'll get from me.

 

Hey man just change the tagline. And yeah they cant do a $^%$% about the domain. Cos it aint breaching nothing !!!

 

I am not giving any legal advice either, and please don't take it if it looked like one.
As I said, I have no experience either.
I Just stated my opinion.
And I didn't quite found it logical that I cannot use ucb-classmates.com

 

"Best Buy" is NOT descriptive. Can you tell me what "best buy" is? Sure...now you can...it's a retail chain that sells electronics but before that it was simple a term implying a good deal. Now it's a business name for the electronics store chain. "Best Buy" is not descriptive of an electronics store. That's also why they don't own bestelectronics.com because it's DESCRIPTIVE.

DUH!

So would AppleForums.com be an infringment if it discussed apple orchards? Would WindowsForums.com be an infringment if they discussed window treatments? Nope to both. You should know better.

For someone claiming 15 years experience you don't seem to be able to distinguish minute details.

Also those old dates are "dead". So they are worthless for this discussion. As a matter of fact they sort of make my point...the "providing on-line electronics bulletin boards" is not an active TM usage for them. Notice in their letter they are not referencing them. Again...minute detail you aren't noticing.

Exactly. With his forum he can add a section for the top schools in the nation. He can make subdomains for nyu.classmates-forum.com and such. Are you saying mjewel that you believe nyuclassmates.com (available btw) would infringe on their mark? Do you really believe that sir?

I agree with you here. Just make sure you understand that SOME of the advice here is good and from VERY experienced TM people.

btw: is this TM infringement? http://www.olgclassmates.com/

And Classmates.com doesn't own the .org or the .net.

And more...do you notice classmates-forum.com doesn't even have any commercial usage? Not one ad that I seen. Where is the brand dilution or similarly confusing reference here? Seriously...it's sad that for one second you think he is wrong in owning this domain. As a person claiming to know more about the law such as yourself I think you should take a second look at some of the facts here as presented.

I could write a UDRP response myself on this one. It would be an ultra-easy victory for someone like John Berryhill.

Thank you.


EDIT #2: Gotta add this. I have a classmates.com paid membership. Reading their letter I can add more fire to this flame but for now I will leave it. They are full of shit and I am going to be cancelling my membership there. I suggest you spread the word about this and let others understand that classmates.com thinks they own the term classmates.

 

Don't forget to keep the paper or email trail as this will help you, should this matter escalate to the courts of law. What does your disclaimer say?

After you contacted Classmates.com and told them about disabling the site and placing a disclaimer, have they gotten back to you?

I think your case is newsworthy. Try to see if a local media outlet is interested to hear your story out. But do consult your lawyer first.

 

sell you domain to them for a few $$$$ and let them happy

 

Descriptive terms can be trademarks. i.e. PARK N FLY or COMPUTERLAND or BEST BOOK BUYS or TRAVEL BEST BUYS - all registered trademarks. You were wrong.

"So would AppleForums.com be an infringment if it discussed apple orchards? Would WindowsForums.com be an infringment if they discussed window treatments? Nope to both. You should know better."

No, but you are making a stupid argument. I have repeatedly stated that usage is the determining factor. I also stated there were other trademark owners of classmates in other usage classes. You're argument is moot because the usage is in the same class. duh! The infringement has already occurred. You can change the usage and get around the fact that it already happened.


"As a matter of fact they sort of make my point...the "providing on-line electronics bulletin boards" is not an active TM usage for them. Notice in their letter they are not referencing them. Again...minute detail you aren't noticing."

I referenced the wrong numbers as they had been changed. You say 2008? Try again.

CLASSMATES
Serial Number 76258329
Filing Date May 17, 2001

Serial Number 76258327
Filing Date May 17, 2001

Serial Number 76258328
Filing Date May 17, 2001
IC 038. US 100 101 104. G & S: Providing on-line electronic bulletin boards, chat rooms and mail services for transmission of messages among computer users and handheld device users, in the field of school, college, military, family, colleagues, interest groups, friends and acquaintances reunions and communications, via a world-wide global computer network; providing multiple-user access to the global computer information network by subscription. FIRST USE: 19951200. FIRST USE IN COMMERCE: 19951200

Did you miss the "electronic bulletin boards" wording. Again, you were wrong. Those "on-line electronic bulletin boards" rights are cast in stone. There is only a five year period of contestability.... and BTW, they did reference that trademark in their letter. You must have also missed that.

"Are you saying mjewel that you believe nyuclassmates.com (available btw) would infringe on their mark? Do you really believe that sir? "

Absolutely - if the usage infringed upon their trademark.

btw: is this TM infringement? http://www.olgclassmates.com/

At first glance, it doesn't seem to infringe upon their usage, but you can sue anyone.... and I hope you aren't suggesting that another infringement gives you infringement rights? It doesn't.

"And Classmates.com doesn't own the .org or the .net. "

So what? Do you have a point? The domains aren't being used and since classmates.com doesn't have exclusive rights to the name, there is no infringement.


"And more...do you notice classmates-forum.com doesn't even have any commercial usage?"

Duh. Mentioned that was the one point in the OP's favor. Also mentioned that if his intention of having the forum a commercial one at some future time, it would remove that point.


"Where is the brand dilution or similarly confusing reference here?"

Classmates.com would argue that he is riding the goodwill established and that consumers would click the url thinking it was associated with their brand.

I gave my opinion about the usage - and said he should consult an attorney. The point I was making was that if the pursue this with a lawsuit, you will spend tens of thousands of dollars in legal fees. Six figure amounts and even seven figures are a possibility. If you win, you are out legal fees. If they win, since it is a Federal mark, they are entitled to damages (which as I stated, would likely be low) but required to pay their attorney fees (treble is possible). Even if you could win, it probably doesn't make sense from a business perspective to spend a large some of money to win a domain that has very little value.

This is often the case when dealing with deep pocket companies in TM infringement cases. They win by default. Right or wrong, it's reality. If the OP wanted to make a stand on principal and had the financial backing, then he should certainly proceed if legal counsel think he has a case.


"I could write a UDRP response myself on this one. It would be an ultra-easy victory for someone like John Berryhill."

Yeah, sure you could - probably stating they don't have a trademark on "on-line electronic bulletin boards" lol. Why don't you offer to fund the legal defense and assume liability? We know you won't. It's easy to play Matlock with someone else's money, eh?

 

Descriptive terms can be trademarks. i.e. PARK N FLY or COMPUTERLAND or BEST BOOK BUYS or TRAVEL BEST BUYS - all registered trademarks. You were wrong.

"So would AppleForums.com be an infringment if it discussed apple orchards? Would WindowsForums.com be an infringment if they discussed window treatments? Nope to both. You should know better."

No, but you are making a stupid argument. I have repeatedly stated that usage is the determining factor. I also stated there were other trademark owners of classmates in other usage classes. You're argument is moot because the usage is in the same class. The infringement has already occurred. You can change the usage and get around the fact that it already happened.


"As a matter of fact they sort of make my point...the "providing on-line electronics bulletin boards" is not an active TM usage for them. Notice in their letter they are not referencing them. Again...minute detail you aren't noticing."

One of the three I referenced had the wrong number as it had been changed. You say 2008? Try again.

CLASSMATES
Serial Number 76258329
Filing Date May 17, 2001

Serial Number 76258327
Filing Date May 17, 2001

Serial Number 76258328
Filing Date May 17, 2001
IC 038. US 100 101 104. G & S: Providing on-line electronic bulletin boards, chat rooms and mail services for transmission of messages among computer users and handheld device users, in the field of school, college, military, family, colleagues, interest groups, friends and acquaintances reunions and communications, via a world-wide global computer network; providing multiple-user access to the global computer information network by subscription. FIRST USE: 19951200. FIRST USE IN COMMERCE: 19951200

Did you miss the "electronic bulletin boards" wording. Again, you were wrong.

"Are you saying mjewel that you believe nyuclassmates.com (available btw) would infringe on their mark? Do you really believe that sir? "

Absolutely - if the usage infringed upon their trademark.

btw: is this TM infringement? http://www.olgclassmates.com/

At first glance, it doesn't seem to infringe upon their usage, but you can sue anyone.

"And Classmates.com doesn't own the .org or the .net. "

So what? Do you have a point? The domains aren't being used and since classmates.com doesn't have exclusive rights to the name, there is no infringement.


"And more...do you notice classmates-forum.com doesn't even have any commercial usage?"

Mentioned that was the one point in the OP's favor. Also mentioned that if his intention of having the forum a commercial one at some point, it would remove that point.


"Where is the brand dilution or similarly confusing reference here?"

Classmates.com would argue that he is riding the goodwill established and that consumers would click the url thinking it was associated with their brand.

I gave my opinion about the usage - and said he should consult an attorney. The point I was making was that if they pursue this with a lawsuit, you will spend tens of thousands of dollars in legal fees. Six figure amounts and even seven figures are a possibility. If you win, you are out legal fees. If they win, since it is a Federal mark, they are entitled to damages (which as I stated, would likely be low) but required to pay their attorney fees (treble is possible). Even if you could win, it probably doesn't make sense from a business perspective to spend a large some of money to win a domain that has very little value.

This is often the case when dealing with deep pocket companies in TM infringement cases. They win by default. Right or wrong, it's reality. If the OP wanted to make a stand on principal and had the financial backing, then he should certainly proceed if legal counsel think he has a case.


"I could write a UDRP response myself on this one. It would be an ultra-easy victory for someone like John Berryhill."

Yeah, sure you could. Why don't you offer to fund the legal defense and assume liability? We know you won't. It's easy to play Matlock with someone else's money, eh?

 

mjewel..I think we agree on some key issues and you have made great points.

I am professional enough not to take this any further and well...going to say goodnight. We have BOTH advised he seek legal counsel immediately if he wants to keep the name.

I am always happy to have a good intellectual legal discussion with other members. I think it's beneficial to all involved.

Thanks for the entertainment.

-Jesse

 

Edit: The letter which they sent you mentions something about you using their trademarked tagline. If that's so, I would get rid of that and just resume operations as normal.

 

I'm sure it can be. Some will see it as the usual David vs. Goliath, while others
might see a company responsibly going after an evil cybersquatter.

Of course, not saying it's either one in this case. Perception is everything, but
I guess it depends which one a party is prepared to deal with.

 

Step 1. Determine the value of this effort. Is this domain name and forum worth the trouble and cost, is it going to be worth the amount of money you put into legal counsel?

Step 1a. If the answer to step 1 is YES go to step 2.
Step 1b. If the answer is no to step 1, stop here, ask classmates.com how to proceed in pushing the domain name into their account. Ask them to provide you a letter stating they received the name, if they do not you will have sufficient evidence from the record of the domain name being pushed into their account so it's no biggie.

2. Discontinue any communication about this subject, do not contact anyone except your attorney. Follow their advice and win the domain name and rights to use. Don't write classmates.com for any reason.

Think carefully, do not fight this fight only to lose money, it does nothing for you to simply win. It's all a matter of money, if you are not going to make more money with this domain & website than the cost of the legal action does not justify the expense. Do not fight to simply to fight for the rights of common man. You will lose money and time and for no reason. I have given several domains back after I weighed the costs and time, it simply wasn't worth it for me. I would prefer to spend my time on profitable, productive ventures. Legal issues also take an emotional toll.

My final thought. I do not think they deserve the name, in my opinion is it clear of any violation of their TM as a domain name but this does depend upon your use of the domain. Having said that, it's too close to their TM to toy with, surely your efforts would be more rewarded doing something else that can be more clear of this sort of entanglement.

Best of luck!

 

hi, classmateguy, i would suggest to settle for $1000 - it is $500 cheaper than icann's dispute fee and normally all companies agrees to that.

pm me if you want to know how

 

classmateguy, I sympathize with you but you should take mjewel's legal summary, along with the business comments of acronym007 (and perhaps 7point4), and think long and hard about what you should do.

I think it is questionable whether classmates.com should have been allowed to get the trademark on a generic word that describes their target market, but the fact is that they have it. Personally, I think it is unfortunate that companies have been granted such exclusivity on key words that describe their goods or services, but it happens often. For some interesting history of a somewhat similar problem, take a look at http://www.thinkinglike.com/Entrepreneur-Word/Entrepreneur-word-TOC.htm which discusses the largely successful attempts of Entrepreneur Media to monopolize the term "entrepreneur."

 

Take the domain down, keep it, or let it go, no one really cares, and I am sure they dont either, they just do not want you running the domain. unless you have $25k just to start a legal battle, then take it down, keep it, your paying for it, so sit on it, cyber-what? those people who sell domains are domain hor's and sit on domains for years...as long as your paying its yours to sit on...the company most like just wants it down, and the longer you keep it up, and they see this, the closer you are going to end up in court, and since attorneys cost $100-200 an hour - I would bet you are bluffing that you even have one, and since you contacted them about having one, this could be very dangerous if you do not....if you tell them you have a lawyer and you really do not and they find out, they will come at you like an iron fist as you have committed fraud to keep them at bay because they thought you had an attorney, most people that come to DP are damn lucky to have jobs, much
less copyright attorneys in their back pocket...

regardless on what is true, not true, who cares, but the longer
your site remains up, even closed, I am sure they are working
on their battle plans to ruin you financially... take it down, and be
done with it, because if you keep it online, they will sooner or later
get you in court, and force you to give them your domain...take it
down now, and do not let this happen...all you are doing is making them
madder..

in my opinion, I would not think you could copyright common names like class mates,
its like placing a copyright on pizza, or even a copyright on your DP login name, but
I am no copyright att, and I do not pretend to be one, but rest assured, if you keep the
domain active, they will come, once you take the domain offline, they will loose interest
in you, take it from someone that has been though this.

 

And you're aware that any online communications can be retrieved should the
complaining party sue and reach e-discovery? While many don't sue and few
do, that's not for anyone to say except the party in question.

 

the two issues: having classmates in your domain title and appartently a tag line that is similar to theirs.

I think they have you on the domain title:
Google is a TM and if you had google-forum.com or something of the like, you would be infringing on their TM b/c you would be inadverting benefiting from their brand. Its easier to identify an infringement on the word like Google b/c its a maded up.

Even though Classmates is an everyday word, it was tm back in 1999 and as a result its propected.
SHS (science high school) shsclassmates.com is different than what you have.

I wouldn't spend the money on the attorney. Enjoy the publicity, hand it over and enjoy the your dinner.

Or do what these people are doing: allclassmates.com is redirected to all classreunions.com.

try reunitemenow.com

 

This is a very interesting conversation...

Where can one find if a name has been trademarked?

Also, can anyone comment on the following ----
--- lets say you have an eye on a domain (eg: bestcar .com)
--- bestcar .com is registered, but NOT being used -- -and most likely not trade marked
--- I register a domain bestcaar. com & trade mark it. (another "a")

Is it possible to trademark this? Can this prevent the owner of bestcar .com to use their domain in future?

I dont want to reveal the actual domain, i dont know if car is a good example, but hopefully the post is clear enough.

thanks!

 

"Where can one find if a name has been trademarked?"

You can do a search at www.uspto.gov for registered trademarks, however, it does not include common law trademarks which do not require any type of filing. A trademark search will run several hundred dollars.

" bestcar .com is registered, but NOT being used -- -and most likely not trade marked
--- I register a domain bestcaar. com & trade mark it. "

You do not need to be using a domain name, or even have a domain name, to have a trademark. The mark must be used, but if they have a brick and mortar location(s) or operating under that name, in the same classification, you could still be infringing upon their rights. That is why you need to pay a trademark search firm to check all types or records.


Is it possible to trademark this? Can this prevent the owner of bestcar .com to use their domain in future?

Trademarks basically operate under "first to use and continue to use". You can't run out and get a registered trademark and then prevent a pre-existing common law usage from using it. It takes about 6 six years for a trademark to become uncontestable (1 year for publication, then 5 years). The common law usage could object to your filing and prevent you from getting a trademark or even using the name in a manner that competes with their usage.

You can do a trademark filing without an attorney. It costs around $325.00 per class to file, but make sure you understand what is required, because if you make a simple error, you must refile and pay again. I would always pay a trademark search firm before filing. You don't want to wait 6 years to find out your mark is infringing upon an existing usage (note: a TM search isn't a 100% guarantee, but it's a lot better than something you can do yourself. Trademarks do not have to be an exact match either, phonetic, similar spellings, and even foreign spellings can be infringement. A good TM search will attempt to point most of these potential conflicts out.