Open Letter To Justin Woo at semvironment Interactive, Inc.
After consulting with our attorneys within a few days of receiving your trademark infringement letter, we were informed of these options:
1. Do nothing.
2. Wait for you to file a suit in California, then file an appeal for personal jurisdiction which may or may not be sustained.
3. A letter authored by our attorneys that basically says you’re full of crap – otherwise known as a desperate attempt for us to get out of your potential litigation.
4. Negotiate for $20,000+ to change the name because of the inherent expense of changing the name and it would be less to pay us off than to sue us.
5. Simply change the business name and avoid a litigious headache and expense to fight the trademark for 2+ years.
We decided to do some more research before ultimately making a decision.
Here is what we found:
The trademark referenced in the letter is not and would not hold up in court considering the fact that our primary mainstay as a business is NOT web design so there is no likelihood of confusion regarding that mark. The suit, should you try coming after us, would most likely NOT include your federally registered trademarks but it would include the suggestion that you started doing search engine marketing prior to our use of the name semvironment which would inherently fall under the USPTO Computer Services Class 35…as one of our readers wisely posted in their comments. Therein is where the potential for “likelihood of confusion” lies.
That being said, here is how a quick course of action may have been if you pursued your federal trademark angle:
1. File suit for federal trademark infringement.
2. We file appeal for personal jurisdiction issues and it is not granted.
3. We fly down, ask you to prove infringement and adequately defend ourselves.
4. You lose the case but the question resorts to the Class 35 distinction…which your wise, expensive attorneys would have probably started with anyways and if that’s the case then I would have seen litigation going as follows:
1. Repeat steps 1 thorugh 3…
2. In our defense, we show that we performed detailed research regarding the names “semvironment Search”, “semvironment Marketing”, “semvironment Advertising”, and more – never running into your section or your website and therefore came to the conclusion that there were not any other names associated with search engine marketing at the federal level so our use of the name semvironment had and has no malicious intent whatsoever and it is unique. That would probably be a flaw in your case – also, the decision making process between our customers is not one that would lead to the real “likelihood of confusion” as suggested by your attorneys…anyways, the case would be very interesting and compelling.
3. The ruling would be an infringement of trademark in your favor wherein the defendant (us) would simply be forced to cease and desist using said mark and continue doing business – NO financial award whatsoever would exchange hands – and here is why:
According to http://www.bitlaw.com/trademark/infringe.html -
“The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the infringed mark was federally registered, attorneys fees would also be available to a successful plaintiff. Monetary damages are also available under the Lanham Act, but in practice are rarely awarded in trademark lawsuits.”
And more importantly, courts have documented these at the US level -
15 U.S.C. Â§1116. Injunctive relief is the preferred remedy in trademark infringement cases. In determining the appropriateness and scope of the injunction, and in balancing the equities of the parties, a court may resolve any doubt in favor of the senior trademark holder.
15 U.S.C. Â§1117. “The court, in exceptional circumstances may award reasonable attorney fees to the prevailing party.”
Most courts and case decisions show that “Exceptional” cases usually involve infringement which is malicious, fraudulent, deliberate or willful.
Our defense would clearly show that any infringement was obviously not malicious, fraudulent, deliberate, or willful in nature considering our thorough research.
And, in effect, the mark where we might be infringing is actually not a federally registered mark but you would get the award of injunction based on the fact that you have seniority use of the name. This would also not be exceptional considering the fact that our customers aren’t in the same target market in any way shape or form – also considering the fact that we do not represent your brand and it would be very hard to confuse the two in our client’s decision making processes. Remember, we have to consider the decision makers in our field – and I would argue that they are very intelligent to the tune of NOT getting confused between our brands. It would be your burden to prove otherwise…
Basically, you would have easily been stuck with footing your own attorney bill – so pick the most expensive attorney possible for all I care…but, we aren’t a litigious company ourselves.
The above arguments made the option of asking for $20,000 to change our name very appealing. After all, it is a big pain to rebuild reputation and authority with a new business name…but it can be done with a fairly large expense.
Fortunately, I’m very confident in my ability to compete and maintain authority with any business name and I tried putting myself in your shoes – I would appreciate and strive to help somebody that chose to help me by NOT coming at me with some sort of negotiation for money. Also, going after a competing business for a chunk of money beyond the scope of regular competition would really show an ‘evil’ character flaw…
Our final decision is to change our business name without recourse or negotiation with you. You would have paid a lot more than us in a court battle (because the legal burden would have been yours to prove infringement) and it would have been a lot of money and time wasted. I prefer to come after your target market with a different name – you put yourself and your customers on my radar and I’m prepared to fight for your customer base. And I mean that in the friendliest competitive way possible.
James C. ZolmanIf you enjoyed this post, make sure you subscribe to my RSS feed!