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Thread: Cease & Desist on Domain Name Use

  1. #21

    Re: Cease & Desist on Domain Name Use

    That's the key to avoiding litigious disputes; something that make the DBA and/or URL .
    Agree and optimize landing page for keyword phrase

    First, Orlando can not be trademarked. Stroller Rental is very generic and the granting of that trademark blocks an entire class of services. It is too generic to be a trademark. That trademark should never have been granted and can be defeated.

    However, we are talking about a lot of money and time, and obviously there is not enough money in stroller rentals to make it worth the bother.

    I would though tell them that. That is an invalid word mark and can be invalidated in court. Only their graphical mark is valid. They are seriously over-reaching.

    This is a common problem. Here in Key West, some B&B trademarked "Key West Bed & Breakfast" and now they are claiming nobody else can use that phrase. The TDC, Tourism Development Council is fighting them and has already spent 60k or so.

    Call it Sunshine Stroller Rental or something if you're doing a real business. If it is just about the domain name, give it up.
    1.Trademark was applied for on November 27 hasn't been issued yet
    2. Time,energy and expense is a hassle
    3. New name and/or adding it to an existing site as a new product offering will be pursued.

    This leads me to ask a new question(theoretically speaking).

    Say site owner A has a dn in business for 3 years.
    Site B gets a similar dn in business for 1 year.

    Site B applies & is granted a mark.

    Site A finds out about mark after opposition(challenge) period has lapsed.
    Do you think he can challenge mark?

    If you can put yourself in both site A and site B shoes.

    From site A's view would it be recommended to trademark a kick butt dn?
    If you have a lot of kick butt dn's cost can add up.

    From site B's view this might not be ethical but would it fly.

    Thanks again for all opinions.

  2. #22
    Rest in Peace 1946 - 2013 deepsand's Avatar
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    Re: Cease & Desist on Domain Name Use

    Quote Originally Posted by wige View Post
    Interesting in that example that the disclaimer does not also mention the phrase Thomas Jefferson, which is used by a wide variety of hospitals.
    Most likely owing to the presumption that the fact that the usage of proper names is a matter already settled at Law will be known to any party considering raising an objection, and that the Thomas Jefferson in question cannot possibly raise an objection.

  3. #23
    Rest in Peace 1946 - 2013 deepsand's Avatar
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    Re: Cease & Desist on Domain Name Use

    Quote Originally Posted by hotels View Post
    This leads me to ask a new question(theoretically speaking).

    Say site owner A has a dn in business for 3 years.
    Site B gets a similar dn in business for 1 year.

    Site B applies & is granted a mark.

    Site A finds out about mark after opposition(challenge) period has lapsed.
    Do you think he can challenge mark?
    That the period for raising objections with the USPTO has expired does not preclude one from later raising such in court.

  4. #24
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    Re: Cease & Desist on Domain Name Use

    Quote Originally Posted by deepsand View Post
    That's the key to avoiding litigious disputes; something that make the DBA and/or URL unique.
    Yes, that will definitely avoid difficulties. BUT, therein lies a defense. The name IS generic.

    Even if they have a trademark on the strong 'Orlando Roller Stroller' they will (most likely) be compelled to except 'Orlando' 'Roller' and 'Stroller'

    Neither party has a strong distinctive mark. If somebody took a TM out on rollerstrollerorlando.com and didn't have the domain, an argument could be made that the mark is abandoned.

    I do see a fairly strong potential for 'confusion as to source'

    You have to determine if this is something worth fighting for, if it is you have to get an intellectual property attorney, hopefully with some experience in trademarks.
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  5. #25
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    Re: Cease & Desist on Domain Name Use

    Quote Originally Posted by Boss Content View Post
    Ignore them, they'll go away.
    And, if they don't, you'll pay for the damages, correct?

  6. #26
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    Re: Cease & Desist on Domain Name Use

    Quote Originally Posted by cw1865 View Post
    Yes, that will definitely avoid difficulties. BUT, therein lies a defense. The name IS generic.
    How is the concatenation of a set of words necessarily "generic?"

    Quote Originally Posted by cw1865 View Post
    Even if they have a trademark on the strong 'Orlando Roller Stroller' they will (most likely) be compelled to except 'Orlando' 'Roller' and 'Stroller'
    Agreed, as did "Thomas Jefferson University Hospital" explicitly disavow any claim to "university hospital."

    Quote Originally Posted by cw1865 View Post
    If somebody took a TM out on rollerstrollerorlando.com and didn't have the domain, an argument could be made that the mark is abandoned.
    Even if such mark were actively used in commerce?

  7. #27
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    Re: Cease & Desist on Domain Name Use

    When I learned about the Lanham Act, and since that time I have only set foot in Federal court once, the general rule is that geographic indications are, by nature, generic, if the geographic term is being used to describe the origin of the goods (the strollers probably weren't made in Orlando, but still the use of Orlando here is to place the locus of the deal in and around Orlando). We spent a fair amount of time discussing PROTECTED geographic indications, ie. Napa Wine, Florida Orange Juice, Champagne (from France), etc. - which remain generic descriptors of the product, but which prevent others from outside that region from using that name.

    Furthermore, a designation of origin combined with a non-distinctive or generic term such as we see here 'Stroller{s}' and 'Rentals' will result in weak mark and you'll have
    difficulty preventing others from adopting slightly different marks.

    The exception to this rule {see my case cite below} is when a geographic mark coupled with a generic has been exclusively used over time and acquired a secondary meaning as TM – irrespective of the fact that it might coincidentally be a designation of origin (you had used an example of the University Hospital, for this exception, think ‘NYU’)


    So, overall when I am looking at these marks, I'm not seeing a single distinctive word, everything about the mark is at best descriptive, at worst generic. While there is some difference between 'generic' and 'descriptive' - for purposes of establishing a trademark, there really isn't much of a difference {the only difference being that a descriptive mark has the secondary meaning exception I described above} - A trademark that is descriptive and lacks secondary meaning is invalid. Bada Co. v. Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir. 1970). Everything I've seen here leads me to believe that the marks describe a 'genus' or family of goods and are hence generic.
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  8. #28
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    Re: Cease & Desist on Domain Name Use

    While I'm off to find the cited case, consider that "Orlando" is also a family name. Whether or not such is here the case I cannot say.

  9. #29
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    Re: Cease & Desist on Domain Name Use

    That happens not to be the case here: "Hello! My name is Shannon Tanner and I am the owner of Orlando Stroller Rentals."

    They're apparently located in Celebration, FL (metro Orlando). EVEN if the surname WAS Orlando, they'd have a difficult time precluding use of that name in and around Orlando. Bring that to NYC and its a different matter.

    What I think we're seeing here is the clash between old school marketing, ie 'Hertz' clashing with the new school 'ranking well for generic searches in google', ie. Florida Car Rental (the old school approach was to put a lot of 'A's' in front of your name so that you would be first in the phone book)
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  10. #30
    Rest in Peace 1946 - 2013 deepsand's Avatar
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    Re: Cease & Desist on Domain Name Use

    Reviewed Bada Co. v. Montgomery Ward & Co., etal., and am puzzled as to its relevance here, in that such did, with respect to the issue of a mark, relate to the use of the words "micro" and "precision" alone, two words which are clearly no more than descriptive.

    In this regards, I find nothing there above and beyond that already addressed by disclaimer re. "university hospital" as above cited; or, here, the words "stroller" and "roller."

    Additionally, it must be noted that "roller stroller" is neither generic nor descriptive, in that it describes a new type of stroller, of which there are several different versions; i.e., the phrase does not describe a specific kind of "roller stroller." See Gadgets: The Roller Buggy Stroller [Technology] | Bowl of Serial and RollerStroller .

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