I'm sure someone here has run into this sort of situation before so I need some advise. I just got done making a website for someone a while ago and recently some jerk from California is saying the company name that my customer made up and hasn't registered is in violation of his registered trademark. His site is: http://gardenofhealing.com/ Garden of Healing my customer's site is: http://naturesgardenofhealing.com/ Nature's Garden of Healing Now I'm pretty sure that since his trademark is made out of common english words, adding another to it makes it different enough. Like I couldn't say Nature's Lexmark or Nature's Pepsi cuz those are made up words but garden and healing are totally common words. In fact, there are some pretty large companies that use "healing garden" as a trademark. Also according to what I read on wikipedia, he has to prove we're immitating him or that our names would confuse users to the point where they wouldn't be able to tell we're two different companies. What do you guys think? Would you say just by the name you think they're affiliated? It sucks that my person is selling an all natural skin oil and their site is a blog about herbs and medicine and natural stuff. If she was selling car parts I don't think he'd have much of a case but then again I don't think his site actually sells anything. Also there's the little point that he registered Garden of Healing as a trademark in 2006 and my customer was actually using it since around 2001, but claims he was using his name since like 1999. To make matters more interesting, he sent a really inaccurate, typo-infested cease and desist letter full of legally inaccurate information and wrong links and all sorts of garbage like that telling us to stop using the name. Then when I responded telling him all what's wrong with his claim, he even said "Oh, your name is ____. That's funny cuz someone by that name has been harrasssing me for three years" as if to imply that if I didn't comply with his demands, he'd make up some ridiculous claim that I've been harrassing him. He even insulted my e-mail address saying it sounded unprofessional and because of that he didn't care what I had to say. This guy is beyond a scumbag. I doubt he has the money for it but he claims he's hiring an actual trademark lawyer and my customer definitely can't afford a lawyer to defend her. There's no way I'm giving in to this jerk and changing the site name and we haven't heard from him in about a week and a half since I told him what I thought of his legal claim so what do you think? Are the names different enough and does he even have a case here?
um patent? No lol. I mean he registered his trademark "Garden of Healing" and he's using "gardeofhealing.com" but I thought there were a ton of domain name trademark cases and they all ended with the conclusion that domain names can be whatever they want as long as they don't immitate the business. I thought the US laws and ICANN policy was anyone can register anything as soon as it expires or if it doesn't exist. So I could register Pepsi.com all I want without infringing on their trademark as long as I don't sell drinks on it and it's a fansite for my dog named Pepsi. Remember the MikeRoweSoft suit that Microsoft basically lost? (they settled but seriously they lost). They got like a hundred lawyers on it and did all their little legal this and that and still couldn't really come up with any decent charges or prove any damages and this guy was like a lawyerless random dude from some small town Part of this guy's cease and desist letter was accusing my customer of "domain squatting" which first of all I don't think is illegal yet and secondly, that's funny I don't remember offering to sell it to him or even contacting him about it. In fact, it's not for sale and we're actualling using it, not squatting on it. This guy's a class A jackass who doesn't seem to know anything but if he does really go nuts on it and hire a lawyer like he said, it's gonna get expensive unless you guys have some tips on what to tell the lawyer?
desolater if you do what you are talking about registering TM names and using it for other reasons you are in direct TM violation regardless of what you use it for and you will just be out of money and be forced to hand it over. Secondly MikeRoweSoft is different from the actual TM name microsoft his TM is in your clients name so he has a good chance of getting it, If he does goes after you he will most likely file a UDRP and go after you this way, feel free to look on the N.A.F. site to get more info. I also suggest that you change your tone of attitude as it will only hender you more in this situation. Enormous
If neither have paid for a trademark then surely there isn't an issue. It's just a slightly similar web address.
If neither have paid for a trademark then surely there isn't an issue. It's just a slightly similar web address.
Wrong. There is no need to register a trademark to have rights to the name. I think they certainly have a case for infringement. You can't add words to a trademark and get around infringement. I would suggest that your client consults an IP attorney. If they decide to file an infringement suit, you would be looking at spending tens of thousands (probably well over a hundred) to see the case through court. As they have a registered mark, they can also seek treble attorney costs.
No, this is not a infringement. Besides where are you from? If he registered it at a state level, then he has no rights to claim something from another state (this isn't even registration, it's a right of use that costs something like $25 for 5 years).
Oh, I just checked and he has bought all available domains for gardenofhealing (i.e. .com, .net, .org, .us, etc.). Strangely enough he hosts at Blogger... Anyway, his real trademark is the FULL domain name, i.e. gardenofhealing.com, gardenofhealing.net, and so on. As these are common words, they can't be registered for exclusive use. Even Microsoft couldn't register "Word" and had to go with "MS Word, Microsoft Word" and variations.