Trademark Infringement

[DrewV]

Hi All, I'm new to the forum. Here's my situation. In 2006 I acquired a domain. The website I published shows various phases of building the products. I had considered making and selling the cabs on the internet, but never did. Basically the website has just been sitting out there in cyberspace since 2006. No updates, no price lists, no order forms. So yesterday I get this email from a law firm. In it they claim that I am infringing on a trademark that is owned by another company since 2000, as well as unfair competition and cybersquatting. They want me to GIVE them the domain name, as well as bar me from using the company name in any domain name. Also to never use an company name in any design, blah, blah blah blah blah.
It appears to me that they just want to rip me off for the domain name, without any consideration for the fact that I have drawn vistors to the site for the last five years, as well as paying the yearly fees to keep the site up. Now, personally I'm not that attached to the website as I could easily move the data from the website to one of my other sites. I do think that if the company wants the web address they should be man enough to offer to buy it from me. Thanks Drew

[edited by: engine at 11:09 am (utc) on Jul 1, 2011]
[edit reason] names obfuscated [/edit]

[StoutFiles]

They can take it from you if the courts find the name to be misleading to the public (aka, people think your site is theirs). You could always update their site saying you have no affiliation with armadillo brand speakers to protect yourself. You could then suggest they make an offer for the site.

Most companies will bully people into giving up a site for free. As long as you follow the rules and have nothing that would imply you're pretending to be them, you should be ok, but there is a slight chance that fighting them will have you in court. Maybe someone here with more experience in this scenario would help with their opinion.

[ron_ron]

I did a trademark search on them and they have registered the mark since March 12, 2002.

[tess2.uspto.gov...]

Lawyers always try to get you to give in even though you have rights too. They prey on people with little knowledge of the law. This can be a good experience for you to learn about law, lawyers, trademarks, and your rights, etc. I encourage to NOT give in. You are not a squatter. If you registered a domain of a really famous mark that would be different. But who the hell ever heard of N.E.A.R ARMADILLO SPEAKERS?

If they held the mark for ARMADILLO SPEAKERS without the "N.E.A.R " then I would think they 'might' have a case. But they have registered the mark as "N.E.A.R ARMADILLO SPEAKERS" and I 'suspect' they cannot go after someone using "ARMADILLO SPEAKERS."

If someone sent me a letter like that, I would consult a trademark lawyer. If you cannot afford it, at least go here for advice:

[intelproplaw.com...]

Drew, I hope you do not give up without a fight. With proper knowledge of the law, you can probably beat them without even going to court.

[MamaDawg]

If you registered a domain of a really famous mark that would be different. But who the hell ever heard of

That's why we have tm's - so you can defend your brand without having to be "really famous."

Things not in your favor: The imagery/name is very unique (what does the first word have to do with that product?), the other company's mark pre-dates yours, and you're in the same class of goods and services.

Putting a disclaimer on the site after you received the letter will do you no good.

In my opinion, they have a strong argument, but I'm not a lawyer (and even if I was, offering legal advice in this forum is a no-no.) If you're serious about fighting this, I strongly suggest you consult a good IP lawyer.

[ron_ron]

DISCLAIMER: I am not offering legal advise - just my opinion.

They have the right to protect themselves for the use of the words: N.E.A.R ARMADILLO SPEAKERS

But Drew is using the words ARMADILLO SPEAKERS and in my opinion, this is not infringing on their mark.

If they owned the mark "ARMADILLO SPEAKERS" and Drew started a site called "Drew's ARMADILLO SPEAKERS", then I believe they would have a case. Drew, I do not believe you even need a disclaimer.

Not only do I believe I am correct on how a court would judge this case, but if someone with a mark like N.E.A.R ARMADILLO SPEAKERS has rights over a person using a domain name called ARMADILLO SPEAKERS the whole system is in grave danger of abuse.

N.E.A.R ARMADILLO SPEAKERS did not register the mark "ARMADILLO SPEAKERS." Had they wanted the rights to that mark they should have registered it. I believe this is a case of bullying. I suspect Drew is right in that they are trying to get him to "give" them the domain. Drew, I highly advise you to get legal advice and don't give in to pressure unless a lawyer advises you to do so.

[buckworks]

The domain name is close enough to the trademarked name to create a serious likelihood of confusion for consumers.

That is a major test and this one fails, IMHO / IANAL.

Go see a lawyer.

[ron_ron]

The domain name is close enough to the trademarked name to create a serious likelihood of confusion for consumers.

Drew isn't selling speakers. If some consumers bought some speakers from Drew, thinking they were made by Bogen, that 'might' be infringement. Bogen has not lost any sales to Drew.

I also think the degree in which a trademark is famous is part of the equation. I could be wrong but I would be willing to bet that Disney Speakers or Starbucks Speakers would land the OP in more trouble than ARMADILLO SPEAKERS.

A trademark ownership is not a license to kill. Trademark ownership allows 'certain' rights but those rights have limitations. The OP also has rights. If the OP does seek profession advice, I do hope he shares it with us.

[Brett_Tabke]

Go ahead and take the rest of your action private DrewV. we are not a venue for the resolution of this dispute.