by Henry Charles Mishkoff
Chapter 1: The Legal-Sized Envelope|
Trademarks and Me
Even before I Googled10 it, I thought that I had at least an elementary understanding of what a trademark was.
Taking the word literally, I assumed that a trademark was a "mark" of your "trade" in other words, the name of your business or some other phrase or image that you use to identify it. Once you've spent a lot of time and/or money establishing the reputation of your company, it would be blatantly unfair for someone else to capitalize on your efforts by using your trademark to try to fool consumers into thinking that they were doing business with you. For example, you could legally open your own hamburger stand, even though other companies have already done so but I assumed that it would be a violation of trademark laws if you called your hamburger stand "McDonald's" or festooned it with golden arches.
Although I had never been involved in any kind of trademark litigation, I did know how aggravating it could be to have someone try to capitalize on your success. Several years earlier, a friend of mine had complimented me on the full-page advertisement I had run on the back page of a local newspaper. Since I had run no such ad, I tracked down a copy of the newspaper and flipped to the back cover where, to my surprise, I found an ad for a web shop by the name of "Web'd Feat." Since my web shop was named WebFeats, I understood my friend's confusion. And if my friend had been confused, it seemed likely to me that potential clients might be confused as well. This did not strike me as a desirable situation.
I immediately fired off a letter to the gentleman who was doing business as Web'd Feat. "I have worked too long and too hard to establish a respected business identity," I said, "to risk having that identity confused with that of anyone else." We exchanged a few notes, and he finally agreed to stop doing business in the Dallas area under a name that could be so easily confused with the name of my business. (In the interest of full disclosure, I should mention that I did threaten him with legal action but not until more than two months had passed and we had exchanged more than half a dozen notes without making any progress.)
I should point out that I didn't really mind the fact that someone was using a name that was very close to my name. What I did mind was that someone was using a name that was very close to my name and doing it in the very same city where I had been working to establish my business. Even if he had been doing business under the exact same name I was using, I wouldn't have complained if he hadn't been doing it right here in my backyard.
Does that last sentence strike you as a little self-serving? Can I prove that I wouldn't have complained about someone doing business as "WebFeats" (or something very similar) as long as they weren't located in Dallas?
As it happens, I can because more than a few web shops have been calling themselves WebFeats (or something very similar) for nearly as long as I've been doing business under that name. Here's a sampling:
As far as I've been able to determine, I registered WebFeats as a domain name before any of these folks registered their domain names. And yet not only have I not threatened any of them, I haven't even contacted them for any reason whatsoever. (A couple of them have contacted me to ask if I might be interested in selling my domain name. I'm not.)
The point I'm trying to make in my roundabout way is that, even if you believe in the concept of trademarks strongly enough to threaten to sue someone who tries to take advantage of yours, that doesn't necessarily imply that you have to threaten and/or sue everyone who registers a domain name that's strikingly similar to your trademark.
Next: Trademarks 101
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