Re: Re: Re: domain vs trademark

Subject: Re: Re: Re: Re: domain vs trademark

Comments:
: : : : This is the story of the Big Bad Woolf. : : : : I have this website that I made for the daughter of a friend of mine a few years ago, the domain is rockinsoccer.com. It's just a silly site with some pictures and links but she really likes it. : : : : I was recently contacted by a company called Woolf Associates who apparently registered the trademark "Rockin'Soccer" back in '98, before my site was up. It didn't occur to me to check the trademark registry cause it's just a little kids website. They have demanded that we sign the domain name over to them and threatened to sue us if we don't. : : : : I've been trying to do some research on my own before I consult a lawyer to try and determine if I should even bother. It sounds like all they would be able to do is prevent me from using the domain name, not actually establish any claim to the domain themselves. : : : : Any thoughts or suggestions would be much appreciated. : : : Dear Robyn, : : : The facts must be examined in detail. What class is there mark in and what use have they made of it. : : : My unreserched feeling is that you can stand pat. If they sue you, they may lose and it may not be impossible to recover defendant's attorney's fees. The lawyers may be scrutinized if they sue if there is no cause of action. : : : The big problem is that legal serveice don't come free and you may have legal costs to bear. : : : 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 (sm) : : : E arly L egal A dvice I s N ot E xpensive : : Thank you for taking the time to respond to my question. I really appreciate it. : : I have searched their website and find no use of the phrase Rockin' Soccer. I have also done an exhaustive search of the Internet and find a few sites using the phrase, none of them belong to them although none of them predate their registration. I know there's life outside the Internet but I'm not sure where else to look. : : This is the information available from uspto.gov. It sounds like I'm not supposed to post this here but it's all public information so I'm doing it anyway. : : The graphic is a drawing of a soccer ball surrounded by the trademarked phrase. : : Word: Mark ROCKIN' SOCCER : : Goods and Services: IC 041. US 100 101 107. G & S: entertainment services in the nature of outdoor soccer tournaments played within a bordered soccer field. FIRST USE: 19980606. FIRST USE IN COMMERCE: 19980606 : : Mark Drawing Code: (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS : : Filing Date: April 15, 1998 : : Filed ITU: FILED AS ITU : : Published for Opposition: October 5, 1999 : : Registration Date: December 28, 1999 : : Disclaimer: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE the depiction of the soccer ball and "SOCCER" APART FROM THE MARK AS SHOWN : : Description of Mark The drawing is lined for the color red. : : Type of Mark: SERVICE MARK : : I know there's a lot of grey area when it comes to this sort of thing and there's no way to know for sure what the outcome will be but I'd be willing to chance a fight if it's leaning in my favor even a little. That completely self righteous email they sent to try and intimidate me really ticked me off. : : One more thing, would it look bad if I offered to sell the domain name to them at a reasonable price? I'd be willing to sell the domain and move the website but I'm afraid offering that as an option may make me sound like a predator who just wants to soak them for a bunch of money, not the case at all, just looking for an amicable solution that doesn't make me feel like I got screwed. : : Again, many thanks. I appreciate the fact that this is your livelihood and you have better things to do than hand out free advice. If I do get incensed enough to hire an attorney you'll be the first person I call ;) : : regards, : : robyn, : Dear Robyn, : It's getting think to study. It does not look, from what you say as if you are a cybersquatter. Without study, there is a question in my mind, as to whether their use is broad enough to cover your use and give a right to cancel. : 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 (sm) : E arly L egal A dvice I s N ot E xpensive

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