Trademark challenge?

A

Amoxicillin

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Sep 28, 2012
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Someone registered a trademark which conflicts with a website I own, and have owned for the over half a decade. The conflicting website is newer than mine, their domain was registered after mine, and I have archive.org proof that my usage of the domain was before the "first use" of their trademark application.

The dickhead thinks he can sue me because he registered the trademark first.

Has anyone had experience dealing with a trademark challenge?

P.S. I'm out of the country, and don't have time to find and consult an appropriate lawyer (yet)
 


Are you making serious money with it? If not maybe send a half assed cease and desist notice and try to scare him. If that doesnt work move on with life. Fighting this will cost you a boat load of cash.
 
dmnEPC said:
Are you making serious money with it? If not maybe send a half assed cease and desist notice and try to scare him. If that doesnt work move on with life. Fighting this will cost you a boat load of cash.
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The site has made me somewhere in the range of about a half million USD since 2005. It's definitely not a priority site by any means, but it's making at least four figures a month right now.

It's not that I'm worried about him, it's that he decided to DMCA me. He filed a DMCA notice with my hosting company and attempted to have me shut down. I filed a coutner-DMCA notice and my hosting company has hence ignored the guy.

The way the cock smoker put it was "I will sue you, but first I'm going to have your hosting company shut you down." Little did he know, my hosting company is colo and they don't want to lose a customer with multiple racks.
 


Yeah, he can sue you, and he will probably win unless you have a boatload of money. Especially if you didn't contest the trademark app. AND you don't even have a trademark... Go to http://www.nissan.com/ and see what happened to Nissan Computers, and they DID have a trademark... Nissan Motors has been attacking them for over 20 years...​
 
CCarter said:


Yeah, he can sue you, and he will probably win unless you have a boatload of money. Especially if you didn't contest the trademark app. AND you don't even have a trademark... Go to Nissan Computer Corporation and see what happened to Nissan Computers, and they DID have a trademark... Nissan Motors has been attacking them for over 20 years...​
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You're really going to compare the coffers of Nissan Motors to some douchebag in Cali? Come on bro...

[ame=http://www.youtube.com/watch?v=7DQAbOYQ88M]Come on, lettuce be cereal with this foolishness... - YouTube[/ame]
 
Was the trademark registered before or after your site? If your site came first, I'd say you have decent footing, but if the trademark predates your site, that doesn't look good for you.

Also, do you know if this guy has deep pockets? If him or his company is massive then it might not be worth the fight even if you can win it. Best thing to do would be to look at how much it's going to cost you in legal fees and other bullshit versus how much the site is earning and what it's worth to sell it or keep it running. Cost benefit analysis.

If that guy is small time or you just want to fight it because screw that guy, then I'd do the following. First contact an attorney and get the ball rolling on a lawsuit. Send out a slew of C&Ds and DMCA notices of your own. Remember you can DMCA not just his hosting, but also his domain registrar. Follow up on them, and don't just send them via e-mail. You can have your lawyer send them if you wish, call on the phone and send them via registered mail, etc. Sometimes persistence pays off.

Either way, it sucks to have to deal with this stuff, lots of stress.
 
erifdekciw said:
Doesn't matter. If he had the trademark before you started your website I believe he can kick you off of it.
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I'll repeat myself, and give a timeframe for reference..

2005 March - I bought MY domain name (something.com)
2006 April - First archive.org listing of MY domain, showing usage of the site in the same way it is today

2006 May - Douchebag registered his domain (similar.org)

2011 October - Douchebag filed "similar" as a trademark
2012 March - Published for opposition
2012 September - Full registered trademark

There can be zero argument that I was first to use the trademark. I've got proof of commerce before he even registered his domain.
 
_poto_ said:
Also, do you know if this guy has deep pockets? If him or his company is massive then it might not be worth the fight even if you can win it. Best thing to do would be to look at how much it's going to cost you in legal fees and other bullshit versus how much the site is earning and what it's worth to sell it or keep it running. Cost benefit analysis.
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That's hard to say. He runs a hosting company, yet his sites are hosted on rackspace, godaddy, and some other places. I'm inclined to guess peasant, which makes suing him worthless.

_poto_ said:
If that guy is small time or you just want to fight it because screw that guy, then I'd do the following. First contact an attorney and get the ball rolling on a lawsuit. Send out a slew of C&Ds and DMCA notices of your own. Remember you can DMCA not just his hosting, but also his domain registrar. Follow up on them, and don't just send them via e-mail. You can have your lawyer send them if you wish, call on the phone and send them via registered mail, etc. Sometimes persistence pays off.

Either way, it sucks to have to deal with this stuff, lots of stress.
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Good idea. It's fairly cheap to have a Filipino nag the douche all day.
 
Amoxicillin said:
I'll repeat myself, and give a timeframe for reference..

2005 March - I bought MY domain name (something.com)
2006 April - First archive.org listing of MY domain, showing usage of the site in the same way it is today

2006 May - Douchebag registered his domain (similar.org)

2011 October - Douchebag filed "similar" as a trademark
2012 March - Published for opposition
2012 September - Full registered trademark

There can be zero argument that I was first to use the trademark. I've got proof of commerce before he even registered his domain.
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Well if he did it after then you have no problems. I misread the OP and thought you said he had a trademark before your website, but didn't start his website until after yours.
 
Amoxicillin said:
That's hard to say. He runs a hosting company, yet his sites are hosted on rackspace, godaddy, and some other places. I'm inclined to guess peasant, which makes suing him worthless.
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The purpose of suing him wouldn't be to take his money, but to bury him in legal fees. If he is a peasant he won't be able to afford a drawn out fight. You might be able to bankrupt him pretty fast, ending his ability to screw with your business.
 
If you have been using a mark in commerce for years, you don't necessarily need to trademark it to protect it. This is a typical "reverse hijack" on your name and you should seek proper legal advice.

I'm not so balling out of control that I would ignore an attack on a 4 figure a month website and if I had the means I'd fight the fucker tooth and nail out of principle. YMMV.
 
_poto_ said:
The purpose of suing him wouldn't be to take his money, but to bury him in legal fees. If he is a peasant he won't be able to afford a drawn out fight. You might be able to bankrupt him pretty fast, ending his ability to screw with your business.
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Fatbat said:
If you have been using a mark in commerce for years, you don't necessarily need to trademark it to protect it. This is a typical "reverse hijack" on your name and you should seek proper legal advice.

I'm not so balling out of control that I would ignore an attack on a 4 figure a month website and if I had the means I'd fight the fucker tooth and nail out of principle. YMMV.
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I did the principle thing last time someone tried to sue me, granted it was an international case and the laws of the foreign country were not entirely in my favor. The guy paid $12,000 of my legal fees, ~$20,000+ of his own, and I was stuck with a $4,000 cost difference at the end of the day.

Approx $7,500 of my fees were as a result of the guy trying be his own lawyer, and the case being delayed for multiple appearances as a result.

The point being, when you fight peasants in court, they can easily cost you a lot of up front cash, and you've got close to zero chance of getting any of it back. A good lawyer is typically going to charge ~$2,500+ for a single court appearance, yet if the douche represents himself, he has a close to zero upfront cost.
 
Amoxicillin said:
The site has made me somewhere in the range of about a half million USD since 2005. It's definitely not a priority site by any means, but it's making at least four figures a month right now.

It's not that I'm worried about him, it's that he decided to DMCA me. He filed a DMCA notice with my hosting company and attempted to have me shut down. I filed a coutner-DMCA notice and my hosting company has hence ignored the guy.

The way the cock smoker put it was "I will sue you, but first I'm going to have your hosting company shut you down." Little did he know, my hosting company is colo and they don't want to lose a customer with multiple racks.
Click to expand...

That is certainly enough income to not give up to easily. Even if you don't sue him you need to fight the take down notices. Maybe Aron Kelly law could help you out (a WF member) or point you I'm the right direction
 
dmnEPC said:
That is certainly enough income to not give up to easily. Even if you don't sue him you need to fight the take down notices. Maybe Aron Kelly law could help you out (a WF member) or point you I'm the right direction
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Aaron's a good guy, I was just a little concerned that he is in the wrong state if this goes to trial, not to mention this isn't so much internet law, as much as trademark law (right lawyer for right case?)
 
Amoxicillin said:
The point being, when you fight peasants in court, they can easily cost you a lot of up front cash, and you've got close to zero chance of getting any of it back.
Click to expand...

Which is exactly why cost benefit analysis comes into it.

I've been sued several times. Lost once and won the others. I've also gotten enough DMCA notices and C&D's to wallpaper my house. So I do truly understand that part of it. I've never been involved in a trademark case though, just lots of copyright stuff and a few other things.

If I were you I'd try to find out more information on the guy before dropping a lot of cash on a lawyer. Like if he owns his home or is renting, if he has a day job, what kind of car he drives, if he is married and what the wife does, etc., etc... just investigate him more. Even if he's not rich, he might still have assets you can go after if/when you win the lawsuit. Knowing exactly what he has might help you make up your mind on how hard you want to fight him.

Another thing to consider, is that if he is a peasant he might be blowing smoke about threatening to sue.
 
I have registered 1 trademark, so that makes me an expert. Did this guy register your exact name, spelling, and spacing, etc.? Because you stated he registered "similar". I'm 90% sure it has to be exact for him to even have merit.
 
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