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someone trademarked "city service"

threatening legal action

     

LifeinAsia

6:13 pm on Jul 17, 2009 (gmt 0)

WebmasterWorld Administrator lifeinasia is a WebmasterWorld Top Contributor of All Time 5+ Year Member Top Contributors Of The Month



First, let me preface this by saying that this is *NOT* a request for legal advice- just a general discussion of the issue.

We just heard about a company that received a service mark for "City Service" (where "City" is the name of a major city and "Service" is a common medical procedure). They are apparently threatening legal action against anyone using "City Service" on their sites. This pretty much includes every single online yellow pages/directory site.

Just to make things more interesting, the company isn't even in "City"- it's located on the other side of the country!

Oh, and if you go to the site, they have a special "'City Service' Yellow Pages" page. Hmm, there are lots of listings that have "City Service" (without the (R) identifier) for keyword stuffing.

It's beyond me how they were able to acquire the service mark in the first place for such a generic name. Has anyone ever heard of having a service mark or trademark challenged (and revoked) after it's been issued?

If this holds, I see a "great" opportunity for shysters to start shell companies, registering "city service" names, and generate revenue from lawsuits. Definitely very chilling in the local scene.

bakedjake

6:31 pm on Jul 17, 2009 (gmt 0)

WebmasterWorld Administrator bakedjake is a WebmasterWorld Top Contributor of All Time 10+ Year Member



Sure, marks can be challenged, but it's usually expensive to do so and probably only worth consideration if it's a major hassle.

Have you checked whether they legitimately own the mark? Or do they just say they do?

LifeinAsia

6:48 pm on Jul 17, 2009 (gmt 0)

WebmasterWorld Administrator lifeinasia is a WebmasterWorld Top Contributor of All Time 5+ Year Member Top Contributors Of The Month



Yeah, checking that it was actually registered was the first thing I did. Otherwise, would have just ignored the whole thing.

The easiest thing to do would be to change the page title to "City, State Service..." instead of "City Service..." But I hate to give the person the satisfaction.

But would also hate to spend the time, money, and effort to fight it.

inbound

1:44 pm on Jul 21, 2009 (gmt 0)

WebmasterWorld Senior Member 10+ Year Member



(This may not be helpful... but worth a try)

Is this in the US?

I know that in the UK trademarks can be given for different types of usage - for example you cannot (easily, if at all) get a trademark of the word-mark "City Service" but you can easily get a trademark on an image of the same words (the image trademark does not stop people for using the words, it just stops them from using the image or anything confusingly similar) - this also applies to the font and colour of text if it's distinctive, so you can get image trade marks that look like text trademarks to the untrained eye (which makes people do things that they don't have to).

Is the trademark for the use of the words or the graphic?

LifeinAsia

3:52 pm on Jul 21, 2009 (gmt 0)

WebmasterWorld Administrator lifeinasia is a WebmasterWorld Top Contributor of All Time 5+ Year Member Top Contributors Of The Month



It's in the U.S. And it's the actual words.

Took the path of least resistance and changed the category name from "Service" to "Service Treatments."

(BakedJake- in regards to your PM, she actually called several times, not just e-mail. I'm just glad I didn't have to deal with her. I probably would have fanned the fires. :) )

inbound

4:49 pm on Jul 21, 2009 (gmt 0)

WebmasterWorld Senior Member 10+ Year Member



I feel for you, it's another example of poor IP handling by US authorities (who are not alone in their inability to properly oversee IP protection legislation/granting/enforcement).

I don't know what I would do, the path of least resistance is always appealing but "Prior Art" is a friend in such cases (usually refering to patents, but widescale usage of a term in an industry prior to filing of a trademark would be enough to make a case for recinding the trademark).

 

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