Re: Trademark infringement and domains

Subject: Re: Re: Trademark infringement and domains

Comments:
: : My company has just been served with a lawsuit concerning trademark infringement with our domain name(s). While one of the names could maybe construed as similar the other 6 are not. Here is an example not using the actual words. : : An Ice Cream Man Near You : : An Frosty Ice Cream Man For You : : Are these deceptively similar? They are seeking an immeadiate injunction on the use of the domain names which would bring my company to a complete stand still being as we are an internet based company. The company suing us has yet to actually get their trademark. They applied in 04/01. In their applicaton it also states they do not have any specificity concerning the words "ice cream man" and "near". We applied for our trademark in 07/01 and we actually made the trademark look like a domain name including the .com whereas they are attempting to trademark just the phrase. Can they actually sue us without officially having the trademark? I did research in California and according the Lanaham Act injuctive relief concerning trademark infringement with a domain is not an option, neither are damages other than transfer of the domain name itself. I feel that this lawsuit is frivalous due to the fact that the similarity of the names is questionable and they don't actually have a trademark. Then there is this recent <a href="http://www.domainhandbook.com/dd3.html#strick>federal ruling concerning domain names and trademark infringement </a> : Dear Dan, : Being sued does not mean that you are wrong. The law is one thing. The reality economics of suing is another. : Under Federal Rule 11, if the lawsuit is frivolous you may even be able to recover your attorney's fees. : You may be stuck if you can't afford to defend. My gut says on the scant evidence you have shown that they have a right to sue but probably won't or can't win. : Under section 43a, they probably have a right to sue without a registration. : Without a registration their case is not as strong. There can be mutual problems within the PTO on the applications. : If you have actual dates of first use prior to theirs, as distinguished from filing dates, your case may be very strong. : My guess is that even if they have a winning case that the court, on the facts as you seem to state them, will not issue an injucntion if you fight them. : M. Arthur Auslander : Auslander & Thomas-Intellectual Property Law Since 1909 : 505 Eighth Avenue, New York, NY 10018 : 212-594-6900, fax 212-244-0028, aus@auslander.com : ELAINE's Workshop™ : E arly L egal A dvice I s N ot E xpensive™

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