FAILBlog.org Cease & Desist on DailyFAILBlog.com

Wanting to get the opinion of the masses. A few people here may have heard of http://failblog.org, but I run a decent little site called http://dailyfailblog.com

I contacted the company that did the iPhone app for the cheezburger network (MC Development) and he reported my site to Ben Huh, who says they now have a trademark on FAIL BLOG and that I will need to surrender my site to them.

Yes, their site is bigger and better than mine, but I like the community I have built around the site and would like to continue to keep it going. My basis for the keeping the site (which I would pry have to battle in court about) is this -

Under ICANN rules (the UDRP), you may have to surrender your domain name if the following three conditions are satisfied:
(1) your domain name is identical or confusingly similar to your opponent's;
(2) you have no legitimate right or interest in the name (in other words, you are not using the name to conduct a bona fide business or for non-commercial fair use purposes); AND
(3) your name is registered and used in bad faith. (which it wasn't even trademarked when I registered and used the name fail blog in my domain name to describe the type of content that the site contains)

# Fair Use
There are two situations where the doctrine of fair use prevents infringement:

1. The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold. (This is where Daily FAIL Blog would be used, as fail blog on the internet now describe sites that show people failing at different things. Other fail sites use the term fail blog to describe these types of sites as blog is just how the content is displayed and fail is the meme of the internet that it is used at)
2. Nominative fair use
This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
* his/her product or service cannot be readily identified without pointing to the registrant's mark
* he/she only uses as much of the mark as is necessary to identify the goods or services
* he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant



This is my first site I have ever started and the stats are pretty solid for the site (roughly 1500 uniques a day). I don't make a profit off of the advertising at this time. Many other sites label themselves "fail blogs" including http://epicfail.com, http://shipmentoffail.com, and even http://failblog.net just to name a few. I believe the basis of the trademark is actually shaky on this one, as it describes the meme and type of delivery and not necessarily the "famousness" of the brand name which they are trying to use as a basis for trademark infringement.

Oh yeah here is the trademark info for FAIL BLOG - http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77709571

 

I think they have a weak claim on the mark. Whether you want to fight is business decision.

 

I agree, they have a weak claim on the "FAIL" & "BLOG" marks they are such commonly used euphemisms in today's world it would be like copyrighting FTW or FTL

You're going to have to hire a lawyer to fight them though, so be prepared to do that.

 

If you have to counter sue or anything, make sure you get enough for financial
losses, atty fees, etc..if they want to go to court, you make them pay for everything,
and that is what your atty is for..

 

You do not get attorneys fees unless there is a specific law authorizing them or by contractual agreement. I do not see that either would apply here.

 

Word Mark FAIL BLOG
FIRST USE IN COMMERCE: 20080103

Domain Name: DAILYFAILBLOG.COM
Created on: 17-Mar-09

This IMO is a questionable TM (FailBlog is no different than CarBlog or SportsBlog), but the bottom line is they were granted it. I don't know if WIPO questions the USPTO's decision to grant a TM or not. I can't recall any ruling like that, but maybe someone knows of an example.

The risky thing here is that even if they are bluffing right now, for the $1,500 filing fee the domain and your traffic might be theirs for the taking at any time.

Considering that it hasn't made you any money and the traffic numbers are somewhat low, I would probably just put up a message ASAP notifying visitors of a new domain and then hope they don't take this one.

 

Let them waste money trying to obtain your domain. Hell, 'fail' and 'blog' are some common words, I'm sure it's not going to be trademarked/copywrighted unless they do so as one word I.E 'failblog'

Just keep on with the site.

 

Uh, that's precisely what the potential mark's holder is doing with their pending
application at USPTO. Microsoft and Head and Shoulders are common words as
well, yet they're famous marks (well the first anyway) because they're used to
distinctively identify their sources of goods in commerce.

I too am of the opinion the OP has a chance of keeping the domain seeing that
both have their own uses. I see other ways, but...I'd rather not say if the one
from the other side especially sees this thread.

To the OP: I agree with browntwn it's a business decision. Minimum is they will
file a Uniform Dispute Resolution Policy or UDRP, worse is a legal suit.

Be ready to see a lawyer versed in this if you wish to defend your registration.
Good luck.

 

They are just bullying you, dont let them take your domain.

 

I have actually sorta came to an agreement with them... I am going to set up a new site in the same meme and forward all traffic for 45 days and then surrender the domain to them... I researched it and pet holdings has filed several suits against similar domains to their other sites. So they aren't afraid of filing... I still think it's shaky, but I wouldn't have the money to fight this. Sadly "The Man" is sticking it to me again lol. Come visit http://failfun.com starting Monday lol

 

They're trying to get take out the competition. Just ignore it or contact a lawyer. Your not breaking any laws or rules so they can jump off a cliff.

 

they do not have a registered TM.

It is still in the "published for opposition" phase.

Would be pretty simple to file an opposition.

Not to do so would constitute a FAIL, wouldn't it?

 

Take it all the way , let them take you to court , then them waste their court fee's , their case is week to say the least, I would imagine it would be more costly for them to take you through court than it would for them to actually offer you a hansom fee to buy your site.

They are trying the "im bigger and better than you plea"

Take it all the way .

 

Actually the ability to file opposition expired 12-31-2009... you only have a 30 day window. They still don't have a full trademark yet

 

Well all that I can tell you, they fail.

 

Yup, it will issue in approximately 30 days (which is roughly the time frame they will be taking the domain away)

It just really makes me mad that I know this wouldn't be that tough of a case if I just had the backing to get going... well wish me luck with failfun.com I guess...

 

it would still be easy enough to have it canceled.

watch what happens if they start messing with other people over this... they will lose it all.

 

care to explain how it's going to be easy?

 

He he, you dispute their USPTO application. Some people have done that for
cases like this.

 

According to everything I have seen you only have 30 days after publication to dispute it through that process.